SNIPER Bulletin Searchable Networked Intellectual Property Electronic Resource June 2014 Note: Due to copyright requirements, IP Australia Library is unable to directly supply copies of these articles to readers outside IP Australia. Please contact your local library to obtain copies of these articles by interlibrary loan. © Commonwealth of Australia 2014 You may share and adapt the information in this publication for any purpose, as long as you attribute the material as follows: This work by the Commonwealth of Australia is licensed under a Creative Commons Attribution 4.0 International Licence. Contact us Enquiries about this publication can be sent to: IP Australia Library Email: library@ipaustralia.gov.au Phone: (02) 6283 2301 ISSN: 2202-753X SNIPER No.: 2014/01052 Author: World Intellectual Property Organization. Economics and Statistics Division Title: 2014 Hague yearly review: international registrations of industrial designs Source: Hague Yearly Review. 2014. General Note: Fourth report in a series. General Note: WIPO Publication No. 930E/14. Summary: Hague System -- international industrial design applications, 2013 -- use of the Hague System -- Hague international applications -- Hague international registrations -- international registrations by Hague members -- -- Hague international registrations by origin -- geographical coverage of Hague international registrations -- international registrations by class -- refusals of international registrations -- administrative performance of the Hague System -- recent developments in membership and the Hague Legal Framework -- Hague members. Subject: Hague Agreement Concerning the International Registration of Industrial Designs (1999 July 2)--statistics Subject: International industrial design applications--statistics SNIPER No.: 2014/01051 Author: Lamb, Ryan Author: Behrens, Vanessa Author: Khan, Mosahid, 1969Author: Le Feuvre, Bruno Author: Zhou, Hao Added author: World Intellectual Property Organization. Economics and Statistics Division Title: 2014 Madrid yearly review: international registrations of marks Source: Madrid Yearly Review. 2014 General Note: WIPO Publication No. 940E/14. General Note: Eighth report in a series. Summary: Madrid System use -- international trade mark applications, 2013 key figures -international registrations -- international registrations by origin -- geographic coverage of Madrid international registrations -- coverage of goods and services -- refusals -- renewals -- international registrations in force -- administration, revenue and fees -- fee distribution among members -developments in the Madrid System -- Madrid members -- summary of the Madrid system. Subject: Madrid Agreement Concerning the International Registration of Marks (1891 April 14). Protocols, etc., 1989 June 27--statistics Subject: International trade mark applications--statistics SNIPER No.: 2014/00964 Author: Thomson Reuters Title: 2014 state of innovation report: twelve key technology areas and their states of innovation Source: Thomson Reuters State of Innovation Report. 2014. General Note: Fifth report in a series. Title changed from Innovation Report in 2010. SNIPER Bulletin – June 2014 Page 1 of 79 Summary: Report on innovation levels in twelve key technology areas, 2013 -- based on patent filing statistics from Derwent World Patents Index (DWPI) -- patent activity by technology area -computers and peripherals -- telecommunications -- automotive -- semiconductors -pharmaceuticals -- medical devices -- domestic appliances -- aerospace -- biotechnology -petroleum -- food, tobacco and beverage fermentation -- cosmetics -- all categories except biotechnology showed increase in activity -- overall rate of innovation growth is now at its highest level since the recession Subject: Innovation (Technological)--statistics Subject: Patent applications--statistics SNIPER No.: 2014/00683 Author: Briceño Moraia, Linda Title: Access to genetic resources and benefit sharing: the Nagoya Protocol in the light of the TRIPS Agreement Source: Ghidini, Gustavo (ed.), TRIPS and Developing Countries: Towards a New IP World Order?. Cheltenham, U.K. : Edward Elgar, 2014. pp. 216-238. Summary: Access to and utilisation of genetic resources -- Rio Convention on Biodiversity -Nagoya Protocol -- promoting the transfer of technology -- spread of associated knowledge -industrialised and developing countries -- objectives and scope of the Nagoya Protocol -correlation between access to genetic resources and benefit sharing -- obtaining consent: the need to harmonise the regulatory requirements -- access to human pathogens -- possible interfering with the TRIPS Agreement -- are compulsory licenses the proper means to ensure benefit sharing -transfer of technology: reappraisal of the local working requirement -- relationship between the RIO Convention and the TRIPS Agreement in light of the Nagoya Protocol. Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994 April 15)-analysis Subject: Traditional knowledge--treaties Subject: Indigenous issues in intellectual property SNIPER No.: 2014/00741 Author: McDonald, Jonathan Author: Hughes-Jones, Ellen Title: Adapting to current advertising realities Source: World Trademark Review. No. 48, April-May 2014, pp. 98-99. Summary: Online advertising more important than ever -- online ad spend and retail revenue generally catching up with traditional retail -- legal regime behind online advertising -- EU Comparative Advertising Directive -- recent and future developments -- two innovative methods of online advertising where the legal regime has had to respond to new concepts -- online behavioural advertising -- viral advertising. Subject: Comparative advertising--law and legislation--United Kingdom Subject: Competition (Economics)--United Kingdom SNIPER No.: 2014/00681 Author: Land, Molly Title: Adjudicating TRIPS for development SNIPER Bulletin – June 2014 Page 2 of 79 Source: Ghidini, Gustavo (ed.), TRIPS and Developing Countries: Towards a New IP World Order?. Cheltenham, U.K. : Edward Elgar, 2014. pp. 142-162. Summary: Agreement on Trade-Related Aspects of Intellectual Property (TRIPS Agreement) -reinforcement of intellectual property standards through WTO's dispute resolution process -- threat of litigation -- special and differential provisions of the treaty governing WTO dispute resolution -way of countering the potential loss of flexibility under TRIPS -- TRIPS adjudication and development -- procedural protection for developing countries -- proposed procedures for LDCs in TRIPS disputes. Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994 April 15)-analysis Subject: Developing countries--treaties SNIPER No.: 2014/01007 Author: Atherton, Hilary Title: Advocate General delivers opinion in unregistered Community Design case Source: World Intellectual Property Report. Vol. 28 No. 5, May 2014, pp. 43-45. Summary: Advocate General's Opinion concerning unregistered design rights of clothing retailer Karen Millen in three of its garments -- long running legal battle with Dunnes Stores in Ireland -questions referred to the Court of Justice of the European Union (CJEU) by the Irish Supreme Court -- concerned how to assess the individual character of a design which is claimed to be entitled to be protected as an unregistered Community Design -- answered in favour of Karen Millen -- facts of the case -- summary of the Advocate-General's Opinion -- overall impression -proof of individual character for the purposes of validity Subject: Community Design--case law--Europe Subject: Industrial designs--case law--Europe SNIPER No.: 2014/01012 Author: Adams, Stuart Author: Tsygankova, Yana Title: After Crimea: the IP consequences Source: Intellectual Property Magazine. May 2014, pp. 6-7. Summary: Treaty of Accession of the Crimea -- Crimea now considered part of Russia -intellectual property (IP) rights in Crimea -- Russian IP law applies in Crimea -- registering rights -enforcing rights -- courts in Crimea will enforce Russian law, and Russian rights -- the future and the wider implications -- the West has imposed relatively symbolic sanctions, however they are threatening more -- rightsholders from the West will find it much more difficult to obtain and protect their rights in Russia -- likelihood of infringement actions being delayed and/or decided against Western parties -- fears are not well founded -- main effect, on Western rightsholders is going to be commercial. Subject: Intellectual property rights--Ukraine Subject: Intellectual property enforcement--Ukraine SNIPER No.: 2014/01014 Author: Waller, Patrick R. H. Author: Young, Daniel W. SNIPER Bulletin – June 2014 Page 3 of 79 Title: The America Invents Act: one year on Source: Intellectual Property Magazine. May 2014, p. 12. Summary: Anniversary of the implementation of the final changes to US patent law under the America Invents Act (AIA) -- first-to-file system -- limited one-year grace period within which an invention can be publicly disclosed by an inventor, before filing a patent application on the invention -- AIA expands the scope of prior art to include foreign offers for sale, sales, and public uses -- new post-grant review proceeding, similar to post-grant opposition proceedings available in Europe -- new post-grant review proceeding -- allows anyone to challenge validity of a patent before the US Patent Trial and Appeal Board (PTAB) on any ground, and at much lower cost than in federal court -- large number of patent applications filed in the week prior to16 March 2013 deadline -- transition to the first-inventor-to-file system -- new derivation proceedings -- many organisations have not changed their filing approach significantly -- already operating under global intellectual property (IP) strategies that accounted for the first-to-file standard outside the US. Subject: Patents--law and legislation--United States Subject: Patents--reform--United States SNIPER No.: 2014/00803 Author: Burk, Dan L. Author: McDonnell, Brett H. Title: Ancillary patent markets and the firm Source: Queen Mary Journal of Intellectual Property. Vol. 4 No. 2, April 2014, pp. 118-138. Summary: Intellectual property and the firm -- ancillary IP markets -- contributory infringement doctrine -- doctrinal limitations -- ancillary IP and transaction costs -- intra-firm costs -- IP exclusive rights not only over the primary subject matter of the rights granted, but also over ancillary subject matter -- patent doctrine of contributory infringement -- scholars have explored the potential for intellectual property rights to affect the size and structure of firms -- mitigating transaction costs both between firms and within firms -- framework extended to consider the impact of ancillary rights. Subject: Intellectual property ownership Subject: Intellectual property licensing SNIPER No.: 2014/00731 Author: Suboh, Munir A. Author: Ben Said, Manel Title: Anti-counterfeiting in the United Arab Emirates, Oman and Jordan Source: World Trademark Review. No. 48, April-May 2014, pp. 72-77. Summary: Dubai has one of the most active anti-counterfeiting regimes in the Middle East and Africa -- becoming the location of choice for the Middle East launch and marketing of international brands -- international centre for transit trade -- known as a point of entry for the re-export for counterfeit goods -- rights holders investing heavily in enforcement throughout the United Arab Emirates -- signatory to various intellectual property (IP) treaties and trade organisations -Trademarks Law the main statute offering enforcement options -- border measures -- criminal prosecution -- civil enforcement -- administrative complaints and enforcement petitions -- online anti-counterfeiting -- preventative measures and strategies -- recordal and training -- general files -pharmaceuticals -- market investigation -- registering packaging -- Oman -- Jordan. Subject: Counterfeiting--Middle East SNIPER Bulletin – June 2014 Page 4 of 79 Subject: Intellectual property enforcement--Middle East SNIPER No.: 2014/00806 Title: Anti-piracy app launched for schools Source: Intellectual Property Magazine. March 2014, p. 6. Summary: United Kingdom's Intellectual Property Office and music industry collaborated to create an app for young people -- aimed at highlighting the destructive effects of piracy on the industry -gives young music fans an insight into the modern music industry -- lets them experience the challenges encountered by artists in the digital age -- funded through UK Music in collaboration with the government -- purposes of the app -- encourage young people to take up careers in music -- help young people understand the concept of piracy and how it effects the creative industries. Subject: Piracy--culture and entertainment industry--United Kingdom Subject: Intellectual property education--United Kingdom SNIPER No.: 2014/00813 Author: Anderson, Ben Title: Are you ready for the new domain names? Source: Intellectual Property Magazine. March 2014, pp. 17-18. Summary: Internet Corporation for Assigned Names and Numbers (ICANN) -- new generic TopLevel Domains (gTLDs) -- opportunity for companies to increase and optimise their brand presence online -- new threats on a global basis -- trade mark infringement, cybersquatting and fraud -develop a brand protection strategy -- introduction of Internationalised Domain Names (IDNs) -opportunity for businesses to operate on a global scale -- tailor online presence and marketing campaigns -- launch of the new IDNs opens up the web to a new portion of the world's population - requires a global monitoring system that is able to identify infringements on an international scale -- new wave of trade mark infringements -- fraudulent websites selling counterfeit goods -- ICANN set up the Trademark Clearinghouse -- rightsholders can register their trade marks and be warned of any potential infringements -- will be a vast increase in the number of web addresses that can be registered by cyber-squatters -- infringe on well-known trade marks – cyber-squatters can then sell web addresses back to trade mark owners at an inflated price -- trick consumers into thinking that illegitimate websites are affiliated with a well-known brand -- possibility of a return to phishing -assess the gTLDs that could pose a risk -- register key trade marks with the Clearinghouse -sophisticated monitoring solutions -- focus on the gTLDs that are applicable to your business -focus on developing an effecting domain name policy. Subject: Domain name registration Subject: Brand management SNIPER No.: 2014/00827 Author: Phillips, Tom Title: Asian aspirations Source: Intellectual Property Magazine. March 2014, p. 54. Summary: South East Asia -- Intellectual Property Office of Singapore (IPOS) -- plans to position itself as an intellectual property (IP) hub -- China's influence -- driven by improvements to its domestic IP market -- incentives to file patents and the creation of 'IP trading' hubs -- led to a patent boom -- alerted South East Asian nations to the opportunities that may be gained from entering IP deals with Chinese companies -- Chian could be about to play a significant role in SNIPER Bulletin – June 2014 Page 5 of 79 forging ahead with copyright reform -- talks between International Confederation of Authors and Composers Societies (CISAC) and the National Copyright Administration of China resulted in a new CISAC office in Beijing -- still huge challenges within SE Asia itself in all areas of IP -- different states of play -- Singapore -- Myanmar (Burma) -- Malaysia -- Thailand. Subject: Intellectual property--reform--Southeast Asia Subject: Intellectual property systems--Southeast Asia SNIPER No.: 2014/00950 Author: Antons, Christoph Title: At the crossroads: the relationship between heritage and intellectual property in traditional knowledge protection in Southeast Asia Source: Wishart, David (ed.), Intellectual Property and New Technologies. Annandale, N.S.W.: Federation Press, October 2013. p. 74-94. General Note: This paper was presented at the 3rd Annual Conference on Innovation and Communications Law: Re-envisioning Progress: Pluralistic Visions of Intellectual Property in a Globalised, Digitised Era, Melbourne Business School, Victoria, 29-31 May 2011. Summary: Traditional knowledge (TK) and traditional cultural expressions (TCE) -- legal and geographical crossroads in the Southeast Asian region -- traditional knowledge in intellectual property, environmental law and human rights -- WIPO Intergovernmental Committee (IGC) negotiations -- cultural spaces and people and cultures in motion -- cultural and intellectual property rights as a potent legal combination -- cross-border disputes about heritage -- UNESCO Cultural Conventions -- Convention on Biological Diversity -- Australia -- Cambodia -- China -Indonesia -- Laos -- Malaysia -- Myanmar -- New Zealand -- Thailand -- Vietnam. Subject: WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore Subject: Convention on Biological Diversity (1992 June 5) Subject: Convention on Biological Diversity (1992 June 2). Protocols, etc., 2010 October 29 Subject: Convention for the Protection of Cultural Property in the Event of Armed Conflict (1954 May 14) Subject: Convention on the Means of Prohibiting and Preventing the Illicit Import, Export, and Transfer of Ownership of Cultural Property (1970 November 14) Subject: Convention for the Safeguarding of the Intangible Cultural Heritage (2003 October 17) Subject: Convention on the Protection and Promotion of the Diversity of Cultural Expressions (2005 October 20) Subject: Traditional knowledge--Southeast Asia Subject: Traditional cultural expressions--Southeast Asia SNIPER No.: 2014/00732 Author: Horowitz, Robert B. G. Title: Attention rights holders: the lessons on genericism from Thermos remain critical Source: World Trademark Review. No. 48, April-May 2014, pp. 78-79. Summary: Risk of a successful mark becoming generic and being used as the name of the product itself -- policing efforts are necessary in order to protect the mark -- history of the Thermos mark in the United States illustrates the dangers of ineffective policing -- policing tips -- media SNIPER Bulletin – June 2014 Page 6 of 79 monitoring services -- domain name searching services -- semi-annual trade mark search reports -dictionary searching -- in-house searching -- news media and periodical searching. Subject: Generic use Subject: Trade mark enforcement SNIPER No.: 2014/00587 Author: Lennon, Lisa Author: Bothwell, Claire Title: Australia Post loses its appeal against Digital Post Australia Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 2, March 2014, pp. 48-49 Summary: Australian Postal Corporation v Digital Post Australia -- digital postal service labelled 'Digital Post Australia' infringes the trade mark 'Australia Post' -- claims of deceptive similarity and passing-off. Subject: Trade mark infringement--case law Subject: Confusing similarity Subject: Famous trade marks SNIPER No.: 2014/01002 Author: Pruzin, Daniel Title: Australia slams delays in WTO dispute proceedings on tobacco plain packaging Source: World Intellectual Property Report. Vol. 28 No. 5, May 2014, pp. 2-3. Summary: Complainants to the World Trade Organization charge that Australia's plain packaging rules for tobacco products violate provisions under the WTO's Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) and Agreement on Technical Barriers to Trade (TBT) -- Australia expressing increasing annoyance over perceived delaying tactics by several of the countries who have lodged disputes at the WTO over its plain packaging rules -- causes legal uncertainty -- tactic to discourage other countries considering similar legislation from going forward -- Indonesia has secured WTO dispute panel -- Honduras and Ukraine secured panels in 2012 and 2013 -- Cuba and Dominican Republic have started WTO proceedings but not yet requested panels -- WTO chief is to appoint panels in Ukraine and Honduras proceedings. Subject: Trade dress--manufacturing and processing industry--Australia Subject: Trade marks--manufacturing and processing industry--Australia Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994 April 15)-Australia SNIPER No.: 2014/00737 Author: Gutierrez, Daniela Title: Avoiding advertising abuse Source: World Trademark Review. No. 48, April-May 2014, pp. 90-91. Summary: Exponential growth of consumer offers -- companies try to target their goods, products and services toward consumers' preferences -- partly due to increased competition, companies are starting to use misleading advertising campaigns -- necessary to regulate advertising in order to ensure that consumers receive more accurate information -- structure of the Mexican laws that SNIPER Bulletin – June 2014 Page 7 of 79 regulate unfair and comparative advertising -- consequences of non-compliance with the legislation -- bodies in charge of overseeing such laws and their capabilities. Subject: Competition (Economics)--Mexico Subject: Comparative advertising--law and legislation--Mexico SNIPER No.: 2014/00841 Author: Phillips, Tom Title: Beijing in the balance: collecting societies on the cusp of an Asian revolution Source: Intellectual Property Magazine. April 2014, pp. 13-15. Summary: International Confederation of Authors and Composers Societies (CISAC) -- new AsiaPacific office -- Chinese government, which is implementing new copyright laws, is paying close attention to what happens in Europe -- already encouraging signs of change in China -- Olivier Hinnewinkel, CISAC's director general -- why CISAC opened an office in China -- strategy -current situation in China -- connection between Europe and China -- size of the challenge in China -- How China will cope with online piracy -- CISAC's concerns in the European region -- China in terms of CISAC's revenues. Subject: Hinnewinkel, Olivier--interviews Subject: Copyright licensing societies--China Subject: Copyright--reform--China SNIPER No.: 2014/00743 Author: Vinh, Le Quang Title: The benefits of a civil approach to IP-related unfair competition lawsuits Source: World Trademark Review. No. 48, April-May 2014, pp. 102-103. Summary: Most competition regimes establish general rules designed to deter any act of competition that is contrary to honest practices -- Paris Convention for the Protection of Industrial Property -- approach to unfair competition under the old regime -- Vietnam issued its Competition Law in 2005 -- law provides a comprehensive definition of 'unfair competition' -- sets out detailed provisions on unfair competition -- limits its treatment of unfair competition to acts which affect intellectual property (IP) rights -- comprehensive legal framework for resolving disputes involving acts of unfair competition -- characteristics of the regime -- Domain names and cyber-squatters. Subject: Comparative advertising--Vietnam Subject: Competition law--Vietnam SNIPER No.: 2014/00927 Author: Browne, Bill Added author: ANU College of Law Title: Betwixt Scylla and Charybdis: law reform to maximise access to creative work while preserving incentives Source: ANU College of Law Research Paper. No. 14-04, 4 November 2013 General Note: A paper submitted for honours thesis, ANU College of Law. Published on Social Science Research Network (SSRN) SNIPER Bulletin – June 2014 Page 8 of 79 Summary: Copyright protections and restricted access to works -- incentives to create without artificial scarcity -- non-copyright-based incentive schemes -- unnecessary monopoly privileges -disproportionate copyright monopolies -- freeriding through private sharing -- orphan works -retroactive expansion of incentives -- under-provision of third-party works -- existing concepts in law reform -- copyright principles -- reduction of copyright duration -- copyright registration requirement -- mandatory assurance contracts -- distinguishing creative works -- limitation of scope -- copyright law reform -- general reforms -- monopoly marketplace -- additional services that could be offered by IP Australia as a copyright registrar. Subject: Copyright--reform--Australia Subject: Copyright systems reform--Australia Subject: Copyright owners' rights--reform--Australia SNIPER No.: 2014/00958 Author: Ribbons, Duncan Author: Eyre-Brook, Victoria Title: Beware of the unwritten requirements for obtaining SPCs Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent Agents. Vol. 43 No. 3, March 2014, pp. 159-162. Summary: Decisions of the Court of Justice of the European Union -- providing clarity on the interpretation of Article 3 of the SPC (supplementary protection certificate) Regulations -investments in pharmaceutical research and development -- patent term extension -- article discusses SPC Regulations -- conditions for granting SPCs -- (C-484/12) Georgetown v Octrooicentrum Nederland ("Georgetown"), (C-443/12) Actavis v Sanofi (''Actavis") and (C-493/12) Eli Lilly v Human Genome Sciences ("Eli Lilly'') -- scope of protection test -- connection between the owners of the MA and the basic patent -- objective of the SPC Regulation -- advice from the Advocate General in these cases not sought. Subject: Patent extension--law and legislation--Europe Subject: Pharmaceutical industry--case law--Europe SNIPER No.: 2014/00650 Author: Stern, Richard H. Title: Bowman v Monsanto: exhaustion versus making Source: European Intellectual Property Review. Vol. 36 No. 4, 2014, pp. 255-261. Summary: Bowman v Monsanto -- US Supreme Court ruling -- patents on crops -- save patented seeds from one crop to plant and grow a subsequent crop -- defend under the exhaustion doctrine -- legal reasoning by the Court -- Countervailing policies ignored -- outlaw ancient practice. Subject: Patent infringement--case law--United States Subject: Genetic modification--case law--United States Subject: Patent exhaustion--case law--United States SNIPER No.: 2014/00828 Author: Tran, Manh Hung Author: Bao, Trung Duong Title: Building Vietnam's defence against online infringers Source: Intellectual Property Magazine. March 2014, pp. 55-57. SNIPER Bulletin – June 2014 Page 9 of 79 Summary: Rapid advancements of science and technology and the internet -- significant impacts upon the socioeconomic developments of many countries -- internet boom in Vietnam contributed positively to its changing economy -- also bred adverse consequences -- business activities are increasingly preferred to be conducted online -- internet has become a fertile environment for commercial fraud, unfair competition and the violation of intellectual property (IP) rights -- IP infringement poses a serious concern to state authorities and IP rights holders trading in Vietnam -pervasive infringement on the internet -- music, films, trade marks and domain names -- state is hesitant to take appropriate action -- issued two new decrees on administrative sanctions in the fields of copyright and industrial property -- increased the level of sanctions imposed for IP infringement -- still do not address online IP infringement as a separate important issue -regulation directly addressing the responsibility of the intermediary service provider (ISP) in the protection of copyright and related rights on the internet -- adoption of a new dispute resolution regime -- demand for more active response. Subject: Electronic copyright--Vietnam Subject: Intellectual property infringement--Vietnam SNIPER No.: 2014/00725 Author: Ivanov, Ivan Author: Ivanova, Aglika Title: Bulgaria's opposition system: the devil's in the detail Source: World Trademark Review. No. 48, April-May 2014, p. 47. Summary: Bulgaria implemented a full opposition system for trade mark registration in 2011 -procedures generally based on the principles of the Community trade mark opposition system -there are significant differences -- fees for filing an opposition -- all facts and evidence must be submitted upon filing the opposition -- grounds for filing an opposition -- cooling-off period and objections -- right to reply and costs -- objections on absolute grounds. Subject: Trade mark opposition--Bulgaria SNIPER No.: 2014/01006 Author: Daniel, Gary T. Author: Remtulla, Tariq Title: Canadian Government seeks swift passage of changes to Trade-marks Act Source: World Intellectual Property Report. Vol. 28 No. 5, May 2014, pp. 42-43. Summary: Government of Canada proposed substantial changes Trade-marks Act on 28 March 2014 -- proposed changes included in omnibus budget implementation bill, Economic Action Plan 2014 Act, No. 1 or Bill C-31 -- most significant proposed change -- elimination of requirement that a mark must be used in Canada or abroad before registration -- other changes to make Canadian trade mark law and practice more consistent with other countries' laws -- allow accession to international trade marks treaties -- other key changes -- adopting Nice Classification system -reducing term of registrations to 10 years -- allowing divisional applications -- permitting certification marks -- recognizing non-traditional marks -- increasing power of the registrar to correct errors in registrations -- replacing the term "trade-mark" with "trademark" and "wares" with "goods". Subject: Trade marks--law and legislation--Canada Subject: Trade mark use--Canada SNIPER Bulletin – June 2014 Page 10 of 79 SNIPER No.: 2014/00767 Author: Giacopello, Fabio Author: Su, Jianfei Title: A case study in declarations of non-infringement Source: Managing Intellectual Property. China IP Focus, 2014, pp. 44-48. Summary: Trade mark squatting case -- tested the non-infringement declaration in front of Chinese courts -- a trade mark used abroad on fashion products turned out to have been preemptively registered in China -- expansion of the fashion brand into Chinese territory was likely to be compromised because of the trade mark issue -- trade of goods was not suspended -- a few retailers of the foreign brand received cease and desist letters from the pre-emptor of the trade mark -- when to initiate a non-infringement declaration -- no specific law or regulation about noninfringement declarations -- forum shopping -- typical cases - in which a non-infringement declaration is often initiated upon the receipt of a cease and desist letter -- relationship with other procedures -- advantages and disadvantages. Subject: Intellectual property infringement--China SNIPER No.: 2014/00835 Author: Thompson, Sandra P. Title: Changing direction with inspired IP management Source: Intellectual Property Magazine. March 2014, pp. 75-77. Summary: Companies faced with the prospect of owning intellectual property (IP) that they can't or won't use and/or don’t want to enforce -- trade marks -- trade secrets -- patents -- unique opportunities and problems when considering whether to keep or sell, license or abandon -- case study -- Google and Lenovo. Subject: Intellectual property licensing Subject: Value of intellectual property SNIPER No.: 2014/00794 Author: Shapiro, Ted Title: CJEU rules on linking in Svensson Source: Managing Intellectual Property. No. 237, March 2014, pp. 21-23. Summary: Court of Justice of the EU (CJEU) -- judgment in the Svensson case -- addressing the question of whether hyperlinking implicates the exclusive right of making available to the public in the European Union Copyright Directive -- answer is that it depends whether the links are accessible by a "new public" -- dispute arose from the posting of links to articles written by journalists in Sweden -- court found that these posts did not amount to a communication to a new public -- position would be different if the links circumvent a site's restrictions -- decision means copyright holders retain important tools to protect their content online and to take action against sites which link to infringing copies of protected works -- will need to carefully consider the initial communication of their works online -- think about what constitutes a restriction -- it will be for national courts to decide when communications are to a new public. Subject: Electronic copyright--case law--Europe Subject: Electronic copyright--culture and entertainment industry--Europe SNIPER No.: 2014/00770 SNIPER Bulletin – June 2014 Page 11 of 79 Author: Wu, Xiaoying Author: Zou, Zongliang Title: Claim definitions undergoing change Source: Managing Intellectual Property. China IP Focus, 2014, pp. 62-66. Summary: An invention is defined by patent claims -- construction of patent claims plays a critical role in nearly every patent case -- central to the evaluation of infringement and validity -- can affect or determine the outcome of other significant issues such as enablement and remedies -- Chinese Supreme People's Court has been working on standards for delineating patent claims -- recent court decision for construing a closed-ended transitional phrase in a pharmaceutical patent claim -Hu Xiaoquan v Shanxi Zhendongtaisheng Pharm Corp -- guidance on best practice when drafting and prosecuting a patent application. Subject: Patent claims--case law--China Subject: Patent applications--China SNIPER No.: 2014/00771 Author: Li, Weifeng Title: Clamp-down on publicising well-known marks Source: Managing Intellectual Property. China IP Focus, 2014, pp. 68-72. Summary: Well-known trade mark system was set up in China nearly thirty years ago -- some great achievements -- serious alienation and abuse of well-known trade marks as a result of drive for profits -- reform of well-known trade mark protection -- prohibition of publicity of well-known marks -- judicial level clarification -- civil actions -- administrative cases -- new guidelines on evidence finding in well-known trade mark establishment -- scope of protection of well-known trade marks. Subject: Famous trade marks--China Subject: Trade marks--law and legislation--China SNIPER No.: 2014/00838 Author: O'Malley, Maura Title: Clear to go Source: Intellectual Property Magazine. April 2014, p. 6. Summary: Trademark Clearinghouse -- centralised repository of validated trade marks for protecting brands in the Internet Cooperation for Assigned Names and Numbers' (ICANN) new gTLD programme -- main defence a trade mark owner has against cyber-squatters -- trade mark owners register their mark in the house -- if anyone attempts to register a domain name which is identical to a trade mark term recorded in the Clearinghouse, the trade mark owner is notified -500,000 warnings sent to prospective registrants that there was a potential conflict between the domain name registered and an existing trade mark -- many registrants ignoring the warnings -forcing parties to go down the Uniform Domain-Name Dispute-Resolution Policy (UDRP) or the Uniform Rapid Suspension (URS) system route. Subject: Domain Name registration Subject: Intellectual property enforcement SNIPER No.: 2014/00726 SNIPER Bulletin – June 2014 Page 12 of 79 Author: Kappos, David Author: Völker, Stefan Title: Colour marks in the United States and the European Union: history, landmarks and evolution Source: World Trademark Review. No. 48, April-May 2014, pp. 49-55. Summary: Companies making increasing use of colours and colour combinations -- create a uniform appearance which identifies the company and its products in the marketplace -- colour as a tangible asset -- single colour trade marks are protectable in the United States -- legal history of colour trade marks in the United States (US) -- landmark decisions resolve colour trade mark dispute in favour of protection -- colour mark doctrine today -- colour marks in the European Union (EU) -- liberation through Libertel -- initial uncertainty and clarification through Libertel -- protection for colour marks today -- colour marks in practice -- US practice -- EU practice. Subject: Colour marks--United States Subject: Colour marks--Europe SNIPER No.: 2014/00679 Author: McManis, Charles R. Author: Contreras, Jorge L. Title: Compulsory licensing of intellectual property: a viable policy level for promoting access to critical technologies? Source: Ghidini, Gustavo (ed.), TRIPS and Developing Countries: Towards a New IP World Order?. Cheltenham, U.K. : Edward Elgar, 2014. pp. 109-131. Summary: Overview of TRIPS and compulsory licensing of intellectual property -- Trade-Related Aspects of Intellectual Property Rights Agreement (TRIPS) -- economic perspectives on compulsory licensing -- capital intensive markets -- availability of alternatives -- patent coverage -compulsory licensing alternatives -- way forward. Subject: Compulsory licensing SNIPER No.: 2014/00585 Author: Knight, Peter Author: Brown, Rachael Title: Computer-implemented method is patentable subject matter: RPL Central Pty Ltd v Commissioner of Patents Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 2, March 2014, pp. 40-43 Summary: Decision on whether inventions in the form of computer programs are patentable -background -- recognition of prior learning -- issues relating to patentability -- challenge to the previous decisions -- decision - is this a "manner of manufacture"? -- a physical embodiment of an invention is not required in order to be patentable. Subject: Computer-related inventions--patentability Subject: Patentability--case law SNIPER No.: 2014/01004 Author: Low, Eugene I. Author: Tsang, Diana SNIPER Bulletin – June 2014 Page 13 of 79 Title: Consultation on treatment of parody under HK Copyright Ordinance continues Source: World Intellectual Property Report. Vol. 28 No. 5, May 2014, pp. 38-39. Summary: Proposed amendments to the Copyright Ordinance of Hong Kong -- Copyright (Amendment) Bill 2011 -- controversial treatment of parody -- end-user groups concerned that criminalising certain acts of communication of copyright works would create a threat to parody and other user-generated content -- Bill withdrawn 2012 -- consultation paper on treatment of parody -Government put forward three options to deal with parody in the new Copyright Ordinance -clarifying existing general provisions on the criminal offences for 'prejudicial distribution/communication" -- introducing a criminal exemption -- introducing a fair dealing exception -- no majority support for any of the three options -- Legislative Council Panel on Commerce and Industry released new discussion paper March 2014 -- discussions continuing. Subject: Copyright--law and legislation--Hong Kong Subject: Fair use (Copyright)--Hong Kong SNIPER No.: 2014/00940 Author: James, Fiona Author: John, Jerome Title: Copyright and online technologies: cloud computing Source: James, Fiona and John, Jerome, Copyright and online technologies 2013. Strawberry Hills, N.S.W.: Australian Copyright Council, March 2013. p. 48-51. Summary: Online copyright -- Australia -- cloud-based computing -- what "the cloud" is -- legal certainty and uncertainties in the cloud -- licensed services -- user owns the rights -- other issues -data security and privacy -- jurisdiction. Subject: Electronic copyright--Australia Subject: Legal jurisdiction--Australia Subject: Internet--Australia Subject: Copyright licensing--Australia SNIPER No.: 2014/00937 Author: James, Fiona Author: John, Jerome Title: Copyright and online technologies: contract and copyright online Source: James, Fiona and John, Jerome, Copyright and online technologies 2013. Strawberry Hills, N.S.W.: Australian Copyright Council, March 2013. p. 29-31. Summary: Online copyright -- Australia -- licence agreements -- terms and conditions on websites -- signatures on emails and other electronic documents. Subject: Electronic copyright--Australia Subject: Copyright licensing--Australia Subject: Internet--Australia SNIPER No.: 2014/00936 Author: James, Fiona SNIPER Bulletin – June 2014 Page 14 of 79 Author: John, Jerome Title: Copyright and online technologies: digital rights management Source: James, Fiona and John, Jerome, Copyright and online technologies 2013. Strawberry Hills, N.S.W.: Australian Copyright Council, March 2013. p. 26-28. Summary: Online copyright -- Australia -- technological protection measures (TPMs) -- prohibition against circumventing an access control TPM -- exceptions to circumventing access control TPMs -- geoblocking -- electronic rights management information (ERMI). Subject: Electronic copyright--Australia Subject: Electronic rights management--Australia Subject: Circumvention--Australia SNIPER No.: 2014/00935 Author: James, Fiona Author: John, Jerome Title: Copyright and online technologies: exceptions Source: James, Fiona and John, Jerome, Copyright and online technologies 2013. Strawberry Hills, N.S.W.: Australian Copyright Council, March 2013. p. 22-25. Summary: Online copyright -- Australia -- contract and copyright exceptions -- fair dealing -private use exceptions -- temporary reproduction exceptions -- computer program exceptions -digital simulcast exceptions. Subject: Electronic copyright--Australia Subject: Fair use (Copyright)--Australia Subject: User-generated content--Australia SNIPER No.: 2014/00934 Author: James, Fiona Author: John, Jerome Title: Copyright and online technologies: how copyright applies online Source: James, Fiona and John, Jerome, Copyright and online technologies 2013. Strawberry Hills, N.S.W.: Australian Copyright Council, March 2013. p. 12-21. Summary: Online copyright -- Australia -- hardcopy versus digital material -- technological convergence -- copyright and technological neutrality -- the communication right -- linking and embedding -- caching, and text and data mining -- user-generated content. Subject: Electronic copyright--Australia Subject: User-generated content--Australia SNIPER No.: 2014/00938 Author: James, Fiona Author: John, Jerome Title: Copyright and online technologies: intermediary liability SNIPER Bulletin – June 2014 Page 15 of 79 Source: James, Fiona and John, Jerome, Copyright and online technologies 2013. Strawberry Hills, N.S.W.: Australian Copyright Council, March 2013. p. 32-38. Summary: Online copyright -- Australia -- internet service providers (ISPs) -- infringement authorisation -- authorisation exceptions -- decision in Roadshow Films v. iiNet Limited (iiNet) -safe harbour schemes -- graduated response and other measures. Subject: Electronic copyright--Australia Subject: Carriage service providers--liability--Australia Subject: Internet--Australia SNIPER No.: 2014/00939 Author: James, Fiona Author: John, Jerome Title: Copyright and online technologies: international dimensions and jurisdictional issues Source: James, Fiona and John, Jerome, Copyright and online technologies 2013. Strawberry Hills, N.S.W.: Australian Copyright Council, March 2013. p. 39-47. Summary: Online copyright -- Australia -- jurisdiction online -- issues affecting jurisdiction -- when an Australian user access internationally-hosted material -- when a person overseas accesses material hosted in Australia -- international cooperation on copyright and copyright treaties -international enforcement case studies -- International Music Score Library Project (IMSLP)/Petrucci Music Library -- Google thumbnails litigation -- current situation in Australia -licence agreements and terms of use -- jurisdictional issues in relation to matters other than copyright. Subject: Electronic copyright--Australia Subject: Legal jurisdiction--Australia Subject: Internet--Australia Subject: Copyright--treaties--Australia SNIPER No.: 2014/00933 Author: James, Fiona Author: John, Jerome Title: Copyright and online technologies: introduction Source: James, Fiona and John, Jerome, Copyright and online technologies 2013. Strawberry Hills, N.S.W.: Australian Copyright Council, March 2013. p. 3-11. Summary: Copyright and the online world -- Australia -- what is protected -- things not protected by copyright -- materials created using automated computer programs -- compilations -- orphan works -- exclusive rights of the copyright owner -- accessing material online -- when copyright is infringed -- moral rights -- performers' rights. Subject: Electronic copyright--Australia SNIPER No.: 2014/00942 Author: James, Fiona Author: John, Jerome Title: Copyright and online technologies: managing risk SNIPER Bulletin – June 2014 Page 16 of 79 Source: James, Fiona and John, Jerome, Copyright and online technologies 2013. Strawberry Hills, N.S.W.: Australian Copyright Council, March 2013. p. 58-61. Summary: Online copyright -- Australia -- liability -- dealing with infringement -- civil and criminals actions -- managing risks -- shifting liability to users -- online risk management processes. Subject: Electronic copyright--Australia Subject: Copyright infringement--Australia Subject: Internet--liability--Australia Subject: Risk--management--Australia SNIPER No.: 2014/00941 Author: James, Fiona Author: John, Jerome Title: Copyright and online technologies: online distribution models Source: James, Fiona and John, Jerome, Copyright and online technologies 2013. Strawberry Hills, N.S.W.: Australian Copyright Council, March 2013. p. 52-57. Summary: Online copyright -- Australia -- online content distribution in context -- type of online value-adds -- re-downloading or hosting source content -- multi-device or multi-platform accessibility -- multi-format availability -- streamlined clearances -- electronic content ecosystems -types of business models -- online digital stores -- subscription-based services -- free and licenced content -- paywalls -- content hubs -- what lies ahead. Subject: Electronic copyright--Australia Subject: Internet--Australia SNIPER No.: 2014/00586 Author: Grelak, Isabel Author: Sanghera, Melissa Title: Copyright in style: not so black and white Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 2, March 2014, pp. 44-47. Summary: Copyright infringement -- protection of artistic styles -- Red Bus case in UK -- black and white photo with a bus depicted in bright red -- similar image created by a tea company was found to be infringing -- style and features compared -- idea and expression dichotomy -- situation in Australia -- Cummins v Vella -- style and subject matter -- remix culture -- Australian Indigenous art styles -- implications for Australia -- artists should not rely solely on copyright to protect their styles Subject: Copyright infringement--case law Subject: Moral rights Subject: Artistic works SNIPER No.: 2014/00949 Author: Corbett, Susan Title: Copyright norms and flexibilities and the digitisation practices of New Zealand museums Source: Wishart, David (ed.), Intellectual Property and New Technologies. Annandale, N.S.W.: Federation Press, October 2013. p. 55-73. SNIPER Bulletin – June 2014 Page 17 of 79 General Note: This paper was presented at the 3rd Annual Conference on Innovation and Communications Law: Re-envisioning Progress: Pluralistic Visions of Intellectual Property in a Globalised, Digitised Era, Melbourne Business School, Victoria, 29-31 May 2011. Summary: Museum digitisation projects -- New Zealand -- gaps and flaws in Copyright Act 1994 (NZ) -- archiving exceptions in copyright law -- rigidities causing problems for museums -- Maori cultural matters -- flexible approaches to copyright -- digital copying -- indigenous cultural heritage - digital images, copyright and contract -- exceptions and international law -- recommendations for future legal development. Subject: New Zealand. Copyright Act 1994 Subject: Copyright--knowledge industry--New Zealand Subject: Electronic copyright--knowledge industry--New Zealand Subject: Fair use (Copyright)--New Zealand Subject: Traditional cultural expressions--knowledge industry--New Zealand SNIPER No.: 2014/00799 Author: Bolter, Nicholas Author: Dickson, Gareth Title: Courts address the social media-copyright clash Source: Managing Intellectual Property. No. 237, March 2014, pp. 39-41. Summary: Social media is about the free flow of information -- copyright law is about restraining reproduction and distribution -- generated a large number of cases before the Court of Justice of the European Union (CJEU) and national courts in Europe -- whether content owners can prevent users from linking to or embedding that content -- courts have looked at questions such as whether short textual content can be protected by copyright (Infopaq) -protection of newspaper headlines (Meltwater) -- status of hyperlinks (Svensson) -- in the face of legal uncertainty, some social media sites have sought to expand their contractual rights in their terms of service -- tailored agreements with content owners may be more useful -- businesses need to define corporate use policies taking account of the needs of their legal, marketing and IT functions. Subject: Social networking Subject: Copyright--law and legislation SNIPER No.: 2014/00742 Author: Radding, Rory Author: Laan, David van der Title: Deceptive claims may lighten advertisers' wallets Source: World Trademark Review. No. 48, April-May 2014, pp. 100-101. Summary: Law on false advertising protects consumers from deception -- Federal Trade Commission Act of 1914 -- established the Federal Trade Commission (FTC) -- codified the truth in advertising laws which the FTC enforces -- advertising must be truthful and non-deceptive and advertisers must have evidence to back up the claims in their advertisements -- what makes an advertisement deceptive? -- FTC has jurisdiction over advertising for most products and services – FTC’s limited resources require that it establish enforcement priorities -- FTC imposes penalties -ranging from cease and desist orders to informational and monetary remedies -- Sensa Products. Subject: Comparative advertising--law and legislation--United States SNIPER Bulletin – June 2014 Page 18 of 79 Subject: Comparative advertising--case law--United States SNIPER No.: 2014/00775 Author: Chen, Shenjun Title: Defence: options, strategies, procedures Source: Managing Intellectual Property. China IP Focus, 2014, pp. 90-94. Summary: Patent infringement litigation in China -- growing number of local and foreign companies are now placed in the defendant's position -- Patent Law of the People's Republic of China -- some options that may be adopted for the defendant's argument in affirmative defence strategies -- prior art defence -- prior use in original scope -- administrative examination exception (Bolar exception) -- business with legitimate source -- patent exhaustion -- patent invalidation -strategies and procedures. Subject: Patent litigation--China Subject: Legal defences--China SNIPER No.: 2014/00583 Author: Hinchliffe, Sarah Title: Depreciation of intellectual property: going, going ... gone! Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 2, March 2014, pp. 30-34 Summary: Tax issues of intangible assets -- are intellectual property and taxation worlds apart? -tax consequences for creating, holding, acquiring or disposing of IP -- where do capital and income fit into the tax equation? -- classifying an expense -- reporting period -- capital allowances -summary and concluding comments Subject: Value of intellectual property Subject: Taxation SNIPER No.: 2014/01013 Author: White, Catherine Title: Design IP: 'the government hasn't listened hard enough' Source: Intellectual Property Magazine. May 2014, pp. 8-10. Summary: United Kingdom Intellectual Property (IP) Bill 2013-2014 -- main purpose of the legislation is to "simplify and clarify" design protection and ownership -- aim of supporting small and medium-sized enterprises -- introducing new criminal penalties for copying UK registered designs -- providing a new design opinions service -- main aims of the bill -- improve and design patent protection -- clarify the IP legal framework -- ensure that the international IP system supports UK business -- Anti Copying In Design's (ACID) chief executive officer, Dids Macdonald -proposal to introduce criminal sanctions attracted great controversy -- government refused to extend criminal provisions to those who infringe on unregistered design rights (URDs) -- ACID's objectives -- impact of the Bill on designers and manufacturers -- launch of the UK's first Designs Exchange. Subject: Macdonald, Dids--interviews Subject: Industrial designs--law and legislation--United Kingdom SNIPER No.: 2014/00769 SNIPER Bulletin – June 2014 Page 19 of 79 Author: Duan, Zhichao Author: Wu, Yan Title: Design protection tightened Source: Managing Intellectual Property. China IP Focus, 2014, pp. 56-60. Summary: State Intellectual Property Office of China (SIPO) issues more design patents than any other office in the world -- improving design protection -- focus on what to protect and how to protect -- proposed revision to the SIPO Patent Examination Guidelines -- covers changes regarding protection for graphical user interfaces (GUIs) -- history and status quo -- highlights and remarks -- issues remaining uncertain -- website and software GUIs -- protection scope -administrative protection of design patents -- evaluation report of design patents -- draft guidance for administrative protection -- object of judgment -- subject of judgment -- comparison of designs -prior design defence -- a unique policy in design protection. Subject: Industrial designs--law and legislation--China Subject: Computer-related inventions--China SNIPER No.: 2014/00817 Author: Clark, Simon Title: Design rights under the microscope Source: Intellectual Property Magazine. March 2014, pp. 30-31. Summary: Intellectual Property Bill -- provisions designed to align United Kingdom design law more closely with Community design law -- proposal to introduce criminal sanctions has attracted some controversy -- introduces a criminal offence for certain infringements of registered UK and Community designs -- not the unregistered design rights -- "intentional" copying -- registration must be valid to be infringed -- in order to be valid, the design must have been "new" and have "individual character" -- effect of this wording is to limit the scope of the offence to only apply to designs which are identical to or virtually identical to the registered design -- difficult to justify the decision not to extend the offence to unregistered design rights -- businesses concerned that the existence of a criminal offence will deter innovation -- design companies will not want to take the risk of improving on the existing design corpus if they could face criminal penalties for doing so. Subject: Industrial design infringement--United Kingdom Subject: Industrial designs--law and legislation--United Kingdom SNIPER No.: 2014/00232 Author: Karachalios, Konstantinos Title: Development strategies of emerging economies in the era of climate change: do patent statistics tell us anything? Source: Abbott, Frederick M., et al. (eds.), Emerging Markets and the New World Patent Order. Cheltenham, U.K. : Edward Elgar, 2013. pp. 119-129. Summary: Findings from patent statistics -- study about patents and clean energy -- patenting across countries -- cross national inventors and ownership of patents -- examples of collaborative platforms -- Agreement for Access to Basic Science and Technology -- role of IP offices -- looking outside the usual territory -- embed mentally and politically within frameworks with broader social aims at the national, regional and international level. Subject: Environmental issues in intellectual property Subject: Intellectual property--statistics SNIPER Bulletin – June 2014 Page 20 of 79 SNIPER No.: 2014/01011 Author: Acharya, Rajeshkumar Author: Tanna, Girish Title: Disclosure of foreign patent applications in India Source: World Intellectual Property Report. Vol. 28 No. 5, May 2014, pp. 51-52. Summary: Patent applicants in India obliged to disclose information to the Controller of Patents regarding a patent application for the same or substantially the same invention which is pending in a country outside India -- applicant to file a statement setting out detailed particulars and giving undertaking -- provisions according to section 8 of the Indian Patents Act and Rule 12 of the Patents Rules 2003 -- scope of and schedule for submitting information -- non-disclosure of foreign applications or submitting false information may lead to revocation of the patent -- case law examples where the Intellectual Property Appellate Board (IPAB) has revoked patents for noncompliance. Subject: Patent applications—procedure--India Subject: Patents--law and legislation--India Subject: Patent revocation--case law--India SNIPER No.: 2014/00819 Author: Villar, Juan Title: Do not screw this up! Source: Intellectual Property Magazine. March 2014, pp. 34-36. Summary: America Invents Act (AIA) -- 16 March 2013 deadline -- defences against various forms of prior art -- these protections are now lost in the AIA -- three types of patent applications under the new patent law -- first-to-file, first-to-invent, and hybrid claims that are a mix of the two -United States Patent and Trademark Office (USPTO) has come up with the term "transition application" to describe applications that were filed after 16 March 2013, but which have a priority date before 16 March -- weird consequences -- new matter -- do not add any new matter to any application transitioning the 16 March 2013, boundary -- how do you fix it if you did not do things the right way? Subject: Patents--reform--United States Subject: Patent applications--United States SNIPER No.: 2014/00740 Author: Dereligil, Ersin Title: Don't believe everything you read Source: World Trademark Review. No. 48, April-May 2014, pp. 96-97. Summary: Turkey's new Consumer Protection Law -- comparative advertising will be allowed -- at present and in principle, comparative advertising is permitted in limited circumstances -comparison cannot be made either directly or indirectly so as to associate or differentiate two competing brands -- comparative advertising is dealt with by certain laws which set out regulations on advertising rules and principles -- two statutory authorities which handle these issues before court proceedings are instigated -- comparative advertising in practice. Subject: Comparative advertising--law and legislation--Turkey SNIPER Bulletin – June 2014 Page 21 of 79 Subject: Competition (Economics)--Turkey SNIPER No.: 2014/00807 Author: White, Catherine Title: Dropping the bath bomb on Amazon Source: Intellectual Property Magazine. March 2014, pp. 7-8. Summary: Lush v Amazon -- consumers who typed 'Lush' into Amazon's search field were directed to alternative cosmetic products -- Amazon also bid on Google's Adword 'Lush bath products' but did not sell any Lush products -- United Kingdom High Court held that Amazon infringed the company's trade mark in its sponsored advertisements and search results -- Amazon has indicated that it will appeal the High Court's decision -- interview with Lush director, Karl Bygrave -- if the courts are beginning to set a uniformed approach on how third parties can use another company's trade mark, in order to generate sponsored advertisements or direct web-traffic for commercial gain. Subject: Bygrave, Karl--interviews Subject: Trade mark infringement--case law SNIPER No.: 2014/01062 Author: Brown, Simon Author: Du Plessis, Mariëtte Title: Easing international registrations in Africa Source: Managing Intellectual Property. No. 238, April 2014, pp. 60-63. Summary: Remarkable economic growth in Africa -- increased interest and foreign investment -investors are becoming concerned about the protection and commercialisation of their intellectual property in Africa -- developments in Africa, particularly in relation to World Intellectual Property Organisation's (WIPO) Madrid System -- 18 African states that have joined the Madrid System -trade mark owners are often uncertain whether international registrations can be enforced in African countries which have acceded to the Madrid Protocol. Subject: Madrid Agreement Concerning the International Registration of Marks (1891 April 14). Protocols, etc., 1989 June 27--Africa Subject: Intellectual property enforcement--Africa SNIPER No.: 2014/00796 Author: Carlson, Steven C. Title: Emerging authority based on Commil Source: Managing Intellectual Property. No. 237, March 2014, pp. 31-33. Summary: Commil decision -- held for the first time that a party accused of inducing infringement may defend by presenting evidence of its good faith belief of invalidity -- cases with Commil-based defences have confirmed that a witness is needed to present the substantive good faith of the company -- not enough to present an expert who testifies to invalidity -- may have reversed the trend of relying less on opinions of counsel in recent years -- lessons learned in the 1980s and 1990s about how to obtain and rely on opinions of counsel will rise in importance -- choosing an outside opinion counsel that is articulate and comfortable under pressure -- planning early as to who the in-house reliance witness will be to ensure appropriate walls with litigation counsel are SNIPER Bulletin – June 2014 Page 22 of 79 maintained throughout the case -- narrow range of cases are suitable for obtaining an opinion under Commil. Subject: Patent infringement--United States Subject: Legal defences--United States SNIPER No.: 2014/00226 Author: Abbott, Frederick M. Author: Correa, Carlos María Author: Drahos, Peter, 1955Title: Emerging markets and the world patent order: the forces of change Source: Abbott, Frederick M., et al. (eds.), Emerging Markets and the New World Patent Order. Cheltenham, U.K. : Edward Elgar, 2013. pp. 3-33. Summary: Emerging markets -- BRICs (Brazil, Russia, India and China) -- international patent system -- state of the patent regime in BRIC nations -- South Africa joined BRIC -- poses a TRIPSs-compatible patent law -- developing countries outside emerging markets -- ASEAN and Thailand -- Arab Middle East -- reaction in the developed countries -- changing global interest patterns -- South Korea -- small and medium enterprises (SMEs) -- individual consumer -implementation of patent law in the emerging market countries is having an impact on the international patent system. Subject: International law Subject: Intellectual property systems SNIPER No.: 2014/01000 Author: Marini-Balestra, Frederico Author: Tremolada, Riccardo Title: Enforcement of online copyright in Italy: the new regulation adopted by the Italian Communications Authority Source: Intellectual Property Quarterly. No. 2, 2014, pp. 143-158. Summary: Issues raised by the Italian Communications Authority's December 2013 regulation on online copyright -- current development of copyright protection in Italy -- implications of the new regulation -- potential normative shortcomings that may hinder the legitimacy and effective enforcement of its provisions -- current regulation on online copyright constitutes a valuable initiative. Subject: Copyright enforcement--Italy Subject: Electronic copyright--law and legislation--Italy SNIPER No.: 2014/00995 Author: Unified Patent Court. The Select Committee Added author: Unified Patent Court. The Preparatory Committee Title: An enhanced European patent system Source: Enhanced European Patent System. 2014. General Note: Produced by the Ministry of Justice, Government Offices of Sweden. SNIPER Bulletin – June 2014 Page 23 of 79 Summary: Unitary patent protection (UPP) -- pre-grant phase -- unitary effects -- formal requirements for UPP -- geographical extension of the UPP -- compensation for translation costs -UPP or a classical European patent -- Unified Patent Court (UPC) -- contracting member states -structure of the UPC -- the UPC Court of First Instance -- Court of Appeal -- transitional period -opt-out scheme and choice of forum -- mediation, arbitration and training -- when will it happen. Subject: Patent systems--harmonisation--Europe Subject: Regional patents--Europe Subject: Patents--reform--Europe SNIPER No.: 2014/00818 Author: Brazell, Lorna Author: Greatbanks, Clare Title: The evolution of design rights Source: Intellectual Property Magazine. March 2014, pp. 32-33. Summary: Designs defined -- directed to protection of appearance -- design must relate to a 'product' -- can be any industrial or handicraft item, packaging, get-up, graphic symbols and typographic typefaces -- to be registrable, a design must be novel and 'have individual character' -current criteria for assessing infringement -- overall impression that counts -- person forming this key impression is the so-called 'informed user' -- recent decisions and forum -- recent decisions illustrate the breadth of protection the English courts seem to be prepared to give to registered designs -- impact of changes to the unregistered design regime. Subject: Industrial designs--law and legislation--United Kingdom Subject: Industrial designs--reform--United Kingdom SNIPER No.: 2014/00234 Author: Zhuang, Wei Title: Evolution of the patent system in China Source: Abbott, Frederick M., et al. (eds.), Emerging Markets and the New World Patent Order. Cheltenham, U.K. : Edward Elgar, 2013. pp. 155-179. Summary: Patent boom in China -- patent quality challenge facing China -- historical development of the patent system in China -- 1979-1984: establishment of the modern law in China -- 1992: the first amendment to the Chinese Patent Law -- 2000: the second amendment to the Chinese Patent Law -- third revision of the Chinese Patent Law -- enhancing innovation capability -- patentability standard raised -- strengthening patent protection -- facilitating dissemination of patent information -- third revision strongly driven by domestic demand -- developing a strategy that balances IPRs, public interest and international obligations. Subject: Intellectual property systems--China Subject: Intellectual property law--China SNIPER No.: 2014/00446 Author: Axhamn, Johan Title: Exceptions, limitations and collective management of rights as vehicles for access to information SNIPER Bulletin – June 2014 Page 24 of 79 Source: Beldiman, Dana (ed.), Access to Information and Knowledge: 21st Century Challenges in Intellectual Property and Knowledge Governance. Cheltenham, U.K. : Edward Elgar, 2013. pp. 164-188. Summary: Role of the international copyright system -- production and availability of information and creative content -- interpretation of the three step test -- Article 13 of TRIPS -- exceptions and limitations -- provision on collective management of rights as vehicles for access to information -mandatory collective management -- extended collective licensing. Subject: Copyright licensing societies Subject: Intellectual property licensing Subject: Copyright--management SNIPER No.: 2014/00992 Author: Jefferson, Osmat Title: Exploring the scope of gene patents through new levels of transparency Source: WIPO Magazine. No. 2, April 2014, pp. 25-29. General Note: Summary of Transparency tools in gene patenting for informing policy and practice by Osmat A. Jefferson, published in Nature Biotechnology, Vol. 31, No. 12 2013, pp. 1086-1093. See also 2013/02726. Summary: Summary of Transparency tools in gene patenting for informing policy and practice -global IP systems -- requires primary data to be freely available and open in a standardised and reuseable form -- tools to visualise, analyse and model data -- diverse needs and uses -transparency of data -- open web-based platforms that enable aggregation, commentary and mapping by the community -- informed Cambia’s development of The Lens (an open access, autonomous web-based patent search facility) -- its biological innovation capability, part of which is referred to here as the PatSeq facility -- gene patents -- transparency in relation to the extent and scope of genetic inventions is critical -- recent decision by the US Supreme Court on breast cancer genes (Association for Molecular Pathology (AMP) v Myriad Genetics) -- patent-disclosed sequences and the human genome -- claimed versus disclosed nucleotide sequences -- patent office survey results. Subject: Data mining Subject: Patenting of life forms Subject: Human genome Subject: Gene sequences SNIPER No.: 2014/00989 Author: Jewell, Catherine Title: A fair deal for authors Source: WIPO Magazine. No. 2, April 2014, pp. 12-13. Summary: Launch of the International Authors Forum (IAF) -- new organisation representing authors (writers and visual artists) globally -- IAF's objectives -- introduce a global authors’ perspective to international copyright policymaking circles -- why copyright is important -- rights and interests in creators' work -- global platform. Subject: International Authors Forum Subject: Moral rights Subject: Copyright owners' rights SNIPER Bulletin – June 2014 Page 25 of 79 SNIPER No.: 2014/01019 Author: Kenyon, Douglas W. Author: Demm, Stephen P. Title: Fair use: clear as mud? Source: Intellectual Property Magazine. May 2014, p. 20. Summary: Cariou v Prince fair use case -- United States Supreme Court denied the cert petition in the case -- leaving in place the US Court of Appeals for the Second Circuit's decision -- most of Richard Prince's paintings appropriating Patrick Cariou's photographs were "transformative," and hence, fair use -- "reasonable observer" would perceive most of Prince's paintings as adding new expression, meanings, or messages to the photographs -- significance of the Second Circuit's decision mean for fair use jurisprudence -- has Cariou clarified or muddied the fair use doctrine? -does Cariou properly balance the interests of owners and users of copyrighted material? -- does it tip the balance too far in favour of users, and thus reduce the incentive to create? -- Campbell v Acuff-Rose Music, Inc -- decision lacks practical guidance for determining the line between infringing and lawful use -- Second Circuit's decision is binding only on federal courts within that circuit -- whether Congress should resolve the question via a clarifying amendment to the Copyright Act. Subject: Fair use (Copyright)--case law--United States Subject: Copyright infringement--case law--United States SNIPER No.: 2014/00843 Author: Mullen, Kenneth Title: Ferragamo fights back Source: Intellectual Property Magazine. April 2014, p. 18. Summary: Global market for luxury goods has continued to thrive -- growth has been seized upon by opportunistic criminals -- counterfeiting problem moving increasingly online -- Salvatore Ferragamo recently publicised action to stop websites allegedly selling counterfeit 'Ferregamo' products -- costs of investigating and taking formal legal action against a counterfeiter can be significant -- mechanisms for enforcement of judgements are cumbersome -- key considerations for a luxury brand wishing to tackle cyber piracy -- establish a strategy -- takedown and blocking -use the Uniform Domain-Name Dispute-Resolution Policy (UDRP) -- report the issue to law enforcement agencies. Subject: Luxury goods Subject: Piracy SNIPER No.: 2014/00766 Author: Zhou, Amy Author: Cheng, David W. Title: Following pharmaceutical data protection Source: Managing Intellectual Property. China IP Focus, 2014, pp. 38-42. Summary: China issued Regulations for Implementation of the Drug Administration Law of the People's Republic of China -- China's promise on joining World Trade Organization (WTO) -related laws and regulations -- Provisions for Drug Registration -- existing problems and further SNIPER Bulletin – June 2014 Page 26 of 79 work -- term "new chemical entities" needs to be defined explicitly -- applicant should provide a statement of non-infringement when applying for drug registration. Subject: Data exclusivity--China SNIPER No.: 2014/00821 Author: White, Catherine Author: Higer, David W. Author: Goryunov, Eugene Title: Free trade agreements and IP provisions Source: Intellectual Property Magazine. March 2014, pp. 41-43. Summary: Protests and rallies in reaction to a free trade agreement (FTA) between the United States and Asia-Pacific regions -- Trans-Pacific Partnership (TPP) Agreement -- opposition to the deal's lack of transparency during negotiations between the US and participating countries -- what are FTAs? -- US-Israel FTA -- North American FTA (NAFTA) between the US, Canada, and Mexico -- presently the US is negotiating the TPP -- objective of shaping a high standard, broad based regional pact -- TPP hopes to liberalise trade and focuses on intellectual property (IP) -- has been labelled as the new Anti-Counterfeiting Trade Agreement and the Stop Online Piracy Act, due to its copyright enforcement proposals -- US and European Union will launch negotiations on the Transatlantic Trade and Investment Partnership (TTIP) -- deal aims to boost economic growth in the US and the EU -- come under heavy fire from detractors, over secrecy and investor-state dispute settlement mechanism -- will allow EU and US based corporations to lodge private legal cases directly against governments. Subject: Free trade--United States Subject: Free trade--Pacific area Subject: International trade--treaties SNIPER No.: 2014/00826 Author: Koda, Henry Title: From defence to offence: Japan's reawakening Source: Intellectual Property Magazine. March 2014, pp. 52-53. Summary: 1905 Japan enacted the Utility Model (UM) Law -- sought to strengthen protection of minor inventions -- encourage development of domestic industries -- technicians raced to file more and more UM applications for small improvements over original products, which had been imported -- Japan became the leading country in the world in terms of the number of patent/ UM applications -- trade imbalance between Japan and the United States became unbearably high for the US -"pro-patent policy" in the US gave strong incentives to US corporations to enforce their patents against Japanese corporations -- many US corporations successfully sued Japanese companies -Japanese corporations began to realise the importance of having a strong patent portfolio -enabled them to leverage their intellectual property (IP) -- negotiate with US competitors for more favourable settlements -- ideally cross-licensing, and positioned patents as a defensive business tool -- increasing competition from China and Korea saw the Japanese economy collapse -- Japan made substantial revisions to the process for UM applications -- faster process and, thus, faster protection -- developing patent strategies for Japanese corporations -- challenges to developing a pro-patent policy. Subject: Minor patents--history--Japan Subject: Patents--policy--Japan SNIPER Bulletin – June 2014 Page 27 of 79 SNIPER No.: 2014/00947 Author: Lawson, Charles Title: The future of intellectual property at the law and technology event horizon Source: Wishart, David (ed.), Intellectual Property and New Technologies. Annandale, N.S.W.: Federation Press, October 2013. p. 1-12. General Note: This paper was presented at the 3rd Annual Conference on Innovation and Communications Law: Re-envisioning Progress: Pluralistic Visions of Intellectual Property in a Globalised, Digitised Era, Melbourne Business School, Victoria, 29-31 May 2011. Summary: Interaction between communications and intellectual property law and new technologies -- technology always developing in advance of the law -- governance of the online world -- capturing the benefits of technological advances -- respecting traditional culture -intellectual property as a tool to promote trade -- loss and damage as a result of new technology -Victoria Park Racing and Recreation Grounds Co Ltd v. Taylor -- copyright and sporting broadcasts -- National Rugby League Investments Pty Ltd v. Singtel Optus Pty Ltd -- copyright freeriding -judicial desire for technological neutral interpretation of legislation. Subject: Intellectual property law--information technology industry--Australia Subject: Electronic copyright--information technology industry--Australia Subject: Copyright--information technology industry--Australia Subject: Internet SNIPER No.: 2014/00808 Author: Ohta, Tom Title: Game over for 'homebrews'? Source: Intellectual Property Magazine. March 2014, p. 9. Summary: Technological protection mechanisms (TPMs) -- used in the video games industry to prevent unauthorised use of pirate games and copying of genuine ones -- TPMs can be hosted within the software and in the firmware -- together work like a lock-and-key to prevent unauthorised use -- techniques to circumvent TPMs have also been developed -- Court of Justice of the European Union (CJEU) recently clarified the circumstances in which such lock-and-key TPMs will be recognised and protected under EC law -- court's consideration of TPMs which may also limit or prevent acts which would not require the rights holders authorisation such as playing 'homebrew' (independently developed) games on the console. Subject: Circumvention--law and legislation--Europe Subject: Circumvention--case law--Europe SNIPER No.: 2014/00607 Author: Sexton, Christopher Title: General editorial: the vexed issue of trading off IP rights in international free trade agreements: the proposed Trans-Pacific Trade Agreement Source: Intellectual Property Forum. No. 96, March 2014, pp. 2-7 Summary: Trans-Pacific Partnership (TPP) negotiations now involve 12 Pacific Rim countries -concerns the Trans-Pacific Trade Agreement (TPPA) may impose stringent copyright without public input, put pressure on foreign governments to adopt unbalanced laws and lacks SNIPER Bulletin – June 2014 Page 28 of 79 transparency -- the TPPA and IP rights -- new policing measures in 'Enforcement' section of IP chapter -- the TPPA and the Australian position -- the future of the TPPA Subject: Draft Trans-Pacific Partnership Agreement Subject: Free trade--Pacific Area Subject: International trade--treaties Subject: Trade regulation--treaties Subject: Intellectual property rights SNIPER No.: 2014/00228 Author: Sell, Susan K. Title: The geo-politics of the world patent order Source: Abbott, Frederick M., et al. (eds.), Emerging Markets and the New World Patent Order. Cheltenham, U.K. : Edward Elgar, 2013. pp. 46-60. Summary: Rule makers v rule takers -- establishment of IP offices in developing countries -assertion of rights under TRIPS flexibilities, other treaties and conventions -- intellectual property, the world trade organization and US preferences -- forum-shifting -- reacting, resisting and pushing back -- counter harmonisation -- competition between BRIC nations (Brazil, Russia, India and China) -- strict IP protection for these countries may be destabilising -- access to affordable medicines, educational materials and employment opportunities remain pressing concerns. Subject: Intellectual property systems--developing countries Subject: International trade SNIPER No.: 2014/00777 Author: Zhang, Shuhua Title: Getting the most out of damages Source: Managing Intellectual Property. China IP Focus, 2014, pp. 102-106 Summary: Intellectual property (IP) owners complain that in China, damages awarded by the courts are too low to deter infringers and discourage repeat infringement -- Supreme Court has addressed the problem on various occasions, and given recommendations to courts to increase the amount of damages -- cases made during recent years -- how to obtain adequate monetary compensation from the infringers -- in some high profile IP lawsuits with foreigners as defendants the foreign parties were ordered to pay heavily -- how to avoid being liable to high damages. Subject: Intellectual property infringement--China Subject: Damages--China SNIPER No.: 2014/01063 Author: Meiring, Wayne Title: Good news, challenges and mixed messages Source: Managing Intellectual Property. No. 238, April 2014, pp. 64-66. Summary: Business is booming in Africa -- impressive growth of the African economy -- increase in knowledge and debate regarding the role of intellectual property (IP) -- many African countries acceding to the most important IP treaties -- investment in African Regional Intellectual Property Organization (ARIPO) -- automation, education and judicial independence in Nigeria -- Anton SNIPER Bulletin – June 2014 Page 29 of 79 Pillers in Kenya -- a new trade mark law in Ethiopia -- challenges -- counterfeiting -- non-statutory registrations in South Sudan -- mixed messages from Africa's largest economy. Subject: Intellectual property rights--South Africa SNIPER No.: 2014/00839 Author: White, Catherine Title: The great copyright war Source: Intellectual Property Magazine. April 2014, pp. 7-9. Summary: EU Commission (EC) public consultation on copyright reform -- harmonisation, limitations and exceptions to copyright in the digital age -- other copyright issues pending -Collective Rights Management Directive -- online retailers and music streaming services will be able to obtain a copyright licence from collective management organisations working across borders -- member states have two years to implement the Directive -- Court of Justice of the European Union's (CJEU) Nils Svensson and Ors v Retriever Sverige AB landmark judgment -copyright must be fit-for-purpose -- EU consultation submissions -- UK government and associations -- collecting societies -- term of copyright protection should be reduced -- Centre of the Picture Industry opposed reducing the current copyright terms -- International Federation of Library Associations and Institutions (IFLA). Subject: Copyright--law and legislation--Europe Subject: Copyright--reform--Europe SNIPER No.: 2014/00729 Author: Clark, Birgit Author: Silverman, Iona Title: A guide to designs and copyright in Europe and the United Kingdom Source: World Trademark Review. No. 48, April-May 2014, pp. 63-66. Summary: European Union design protection governed by a number of co-existing and complex EU and national regimes -- EU Community Design Regulation and EU Design Directive -- directive aims to harmonise the national design laws in the EU member states -- regulation has created an independent registered Community design (RCD) system for the EU -- similar to that of the Community trademark (CTM) system -- both systems are administered by the Office for Harmonisation in the Internal Market (OHIM) -- key differences between CTMs and RCDs -informed user -- RCDs versus unregistered Community designs -- protection under national laws -designs versus trade marks -- invalidity of RCD based on earlier trade mark -- invalidity of CTM based on earlier RCD -- copyright protection in the EU. Subject: Industrial designs--law and legislation--Europe Subject: Industrial designs--law and legislation--United Kingdom Subject: Copyright--law and legislation--Europe Subject: Copyright--law and legislation--United Kingdom SNIPER No.: 2014/00812 Author: Stobbs, Julius Author: Rebling, Caspar Title: Hard lessons over a soft toy SNIPER Bulletin – June 2014 Page 30 of 79 Source: Intellectual Property Magazine. March 2014, pp. 15-16. Summary: Court of Justice of the European Union (CJEU) -- decision in Margarete Steiff GmbH v Office for Harmonization in the Internal Market (OHIM) -- German soft toy manufacturer, Steiff, is not entitled to Community Trade Mark protection for the position of a button on the ear of a soft toy -- did not meet the required level of distinctiveness to be registrable -- "position marks" -- the law in the EU with regard to the registrability of "non-standard marks" -- lagging behind the realities of the market and the perception of the modern consumer -- strategies for how brand owners might obtain protection -- improve their position in respect of such marks -- in reality they are very much seen as trade marks by consumers and have significant commercial importance. Subject: Trade mark distinctiveness--case law--Europe Subject: Non-traditional marks--case law--Europe SNIPER No.: 2014/00237 Author: Kudlinski, Andre Title: Harmonising the national policies for healthcare, pharmaceutical industry and intellectual property: the South African experience Source: Abbott, Frederick M., et al. (eds.), Emerging Markets and the New World Patent Order. Cheltenham, U.K. : Edward Elgar, 2013. pp. 255-285. Summary: Health situation in African countries -- Sub-Saharan Africa home to 11% of the global population, bears 24% of the global disease burden -- commands less than 1% of the global health expenditure -- technology gap between Africa and the rest of the world -- "crowding-out" of national pharmaceutical manufacturers by donors -- African pharmaceutical sector and healthcare needs of the continent -- plants to increase pharmaceutical production in Africa -- African Patent Office -South African healthcare sector -- pharmaceutical sector in the South African economy -- South African patent system -- survey of South African patent law and practice -- Patents Act vs. the Competition Act -- revision of the South African intellectual property policy and legislation -pressure from NGOs demanding the government exercise the TRIPS flexibilities to the maximum -critically examine the practice of unrestrained granting of South African patents for pharmaceutical products -- questions over South Africa's capacity for change. Subject: Pharmaceutical industry--Africa Subject: Intellectual property systems--South Africa SNIPER No.: 2014/00824 Author: Leichtman, David Title: Having their say on fair use Source: Intellectual Property Magazine. March 2014, pp. 49-50. Summary: Congressional hearings on fair use -- five individuals testified -- consensus seemed to be that while recent controversial and conflicting decisions were not an ideal framework, further work should be done by the courts before any legislative changes are considered to the fair use provision in the Copyright Act, 17 USC S.107 -- Law Professor Peter Jaszi -- June Besek, the executive director of the Kernochan Center for Law, Media and the Arts at Columbia Law School -Naomi Novik, an author of ten novels -- David Lowery, a songwriter, music producer, performing artist and lecturer -- Kurt Wimmer, the general counsel of the Newspaper Association of America (NAA) -- some suggestions were made on how to address mass digitisation and other perceived issues specifically caused by how the Digital Millenium Copyright Act's (DMCA) current notice and takedown process may cause fair use to be decided outside of the courtroom. Subject: Fair use (Copyright)--United States SNIPER Bulletin – June 2014 Page 31 of 79 Subject: Copyright--law and legislation--United States SNIPER No.: 2014/00952 Author: Shao, Ken Title: History is a key decoder: why China aims at re-emerging as a global leader of innovation Source: Wishart, David (ed.), Intellectual Property and New Technologies. Annandale, N.S.W.: Federation Press, October 2013. p. 117-132. General Note: This paper was presented at the 3rd Annual Conference on Innovation and Communications Law: Re-envisioning Progress: Pluralistic Visions of Intellectual Property in a Globalised, Digitised Era, Melbourne Business School, Victoria, 29-31 May 2011. Summary: Chinese shift from manufacturing to innovation economy -- innovation in Chinese history -- whether China historically understood intellectual property -- why China is the world's factory -- latest Chinese policy changes on innovation -- ongoing development of Chinese innovation and intellectual property culture. Subject: Innovation (Technological)--policy--China Subject: Intellectual property--policy--China SNIPER No.: 2014/00792 Title: How Ford's Turkish unit is expanding beyond its borders Source: Managing Intellectual Property. No. 237, March 2014, pp. 16-17. Summary: Interview with Mine Duran, the head of intellectual property (IP) at auto manufacturer Ford Otosan in Turkey -- Ford Otosan's relationship to Ford Motors -- the IP team at Ford Otosan - biggest issues in Turkey at present -- trade mark infringement -- increase in IP infringement -recent changes to IP law -- other plans. Subject: Duran, Mine--interviews Subject: Manufacturing and processing industry--Turkey SNIPER No.: 2014/00762 Author: Chang, Spring Title: How rising filing rates are challenging protection Source: Managing Intellectual Property. China IP Focus, 2014, pp. 14-18. Summary: Rapid increase in the number of trade mark applications in China -- securing and enforcing intellectual property (IP) rights is becoming more challenging -- increasing number of IP lawsuits and increasing trends in damages -- importance of a strong IP portfolio -- key recommendations -- implications of the growth in IP filings in China -- impact of the New Trade Mark Law -- changes in patent and copyright practice when protecting IP in China. Subject: Trade marks--law and legislation--China Subject: Intellectual property enforcement--China SNIPER No.: 2014/00768 Author: Shen, Freder J. Author: Li, Jenny J. SNIPER Bulletin – June 2014 Page 32 of 79 Title: How to navigate preliminary examinations Source: Managing Intellectual Property. China IP Focus, 2014, pp. 50-54 Summary: China Patent Examination Guidelines -- amendments made to the provisions for the preliminary examination on Chinese utility model and design patent applications -- contents of the amendments -- utility model applications -- design patent applications -- reasons for the amendments -- application advice -- State Intellectual Property Office (SIPO) pushing forward on quality. Subject: Minor patents--law and legislation--China Subject: Patent applications--China SNIPER No.: 2014/00724 Author: Le Court, Valentin de Title: How to protect packaging under Chinese law Source: World Trademark Review. No. 48, April-May 2014, pp. 43-46. Summary: Aesthetic appeal of packaging -- create a strong visual impact to attract potential buyers and lure them away from competing products -- packaging has become a valuable asset for brand owners -- role it plays in product recognition -- creativity and substantial financial investment required to develop a unique and distinctive container that will help promote market recognition -the rise of passing off -- coordinated strategy to create bundles of rights -- protecting packaging through trade mark law -- protecting packaging through patent law -- invention patents and utility models -- design patents -- copyright law -- protecting packaging through the Anti-unfair Competition Law -- long-term, multi-step strategies. Subject: Passing-off--China Subject: Trade dress--China SNIPER No.: 2014/00774 Author: Shen, Lanying Author: Dang, Xiaolin Title: How to reward and remunerate your inventors Source: Managing Intellectual Property. China IP Focus, 2014, pp. 84-88. Summary: Reward and remuneration to inventors of service inventions -- each company may have specific concerns and strategies regarding the issue -- several common features in dealing with the reward and remuneration issue -- two different concepts -- separate and cannot replace each other -- High People's Court's Guideline of Hearing Disputes regarding Inventor/Designer Reward and Remuneration for Service Invention -- employer should be allowed to give the inventor a lump sum for reward and remuneration together -- paying the reward and remuneration -- setting the reward and remuneration -- methods of reward and remuneration -- more contribution better reward -- inventor's right of first refusal -- foreign-made inventions granted with a Chinese patent -relationship between inventor and patentee -- an inventor friendly approach -- employers, take heed. Subject: Inventors' rights--China Subject: Patent entitlement--China SNIPER No.: 2014/00798 Author: Kalra, Binny SNIPER Bulletin – June 2014 Page 33 of 79 Author: Sreekumar, Achuthan Title: Hunting down India's nameless infringers Source: Managing Intellectual Property. No. 237, March 2014, pp. 36-38. Summary: John Doe orders are an important tool in India for fighting infringement in situations where the infringers are many and at the outset unknown -- to secure such an order, plaintiff must show that it is likely to prevail at trial -- activities of the defendants will cause irreparable harm -- the balance of convenience lie in granting such an order -- reasonable likelihood that the defendants may destroy the evidence -- there are common questions of law or fact arising among cases against the various defendants -- quality of the plaintiff's investigators will be key in obtaining the needed information to justify granting the order. Subject: Legal procedure--India Subject: Intellectual property infringement--India SNIPER No.: 2014/00795 Author: Barraclough, Emma Title: I [love] ADR: why mediation's time has come Source: Managing Intellectual Property. No. 237, March 2014, pp. 24-30. Summary: Forms of Alternative dispute resolution (ADR) -- arbitration, evaluative mediation, expert evaluation and facilitative mediation -- do disputes need to go to court? -- demand for mediation is rising -- courts around the world take steps to make IP litigation cheaper, quicker and more effective -- creation of the Intellectual Property Enterprise Court in the United Kingdom -growing cost of litigation -- overworked courts -- the role of lawyers -- incentives for trial lawyers to steer their clients away from litigation -- lack of awareness of mediation among intellectual property (IP) practitioners -- courts and clients are putting more pressure on trial lawyers -- some IP owners worry that proposing mediation will be interpreted as a sign of weakness -- enforced mediation -what can be included in a mediation agreement? -- how to make mediation work -- mediating the mediation -- mediator should not impose his or her views on the parties -- can be temporarily evaluative if parties request an opinion. Subject: Dispute resolution Subject: Litigation--costs SNIPER No.: 2014/00990 Author: Gómez Bravo, José Manuel Title: Ibero-American broadcasts signal need for change Source: WIPO Magazine. No. 2, April 2014, pp. 18-20. Summary: Ibero-American Broadcasters for Copyright Alliance (ARIPI) -- formed September 2011 -- brings together broadcasting organisations from across Latin America and Spain -- aims to highlight the need to make sure that the international legal framework governing broadcasting is updated and brought into line with present-day operating realities -- broadcasting organisations exposed to huge problems of signal piracy both within and across borders -- few effective legal means to stop these damaging practices -- fuelled by the proliferation of enabling technologies -importance of broadcasting as a vehicle for social expression -- Alliance urges policymakers to finalise an international agreement that offers global, comprehensive, fair and balanced protection for broadcasters around the globe. Subject: Culture and entertainment industry Subject: Piracy SNIPER Bulletin – June 2014 Page 34 of 79 Subject: Neighbouring rights SNIPER No.: 2014/00684 Author: Otieno-Odek Title: The illusion of the TRIPS Agreement to promote creativity and innovation in developing countries: case study on Kenya Source: Ghidini, Gustavo (ed.), TRIPS and Developing Countries: Towards a New IP World Order?. Cheltenham, U.K. : Edward Elgar, 2014. pp. 239-301. Summary: Multilateralisation of intellectual property standards in TRIPS Agreement -- technology diffusion and dissemination under TRIPS Agreement -- role of non-governmental organisations in TRIPS debates -- ideational power as a factor in global IP discourse -- TRIPS and promotion of creativity and innovation -- innovation and development -- science, technology and innovation policies -- TRIPS and national innovation systems -- major components of a national innovation system -- recommendations for developing countries with regard to international IP debates -- case study on Kenya's national innovation system -- innovation and research institutions in Kenya -- IP portfolio of public universities in Kenya -- weakness of the Kenyan IP system -- recommendations to improve Kenya’s creative and innovative capacity. Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994 April 15)-analysis Subject: Intellectual property systems--Kenya SNIPER No.: 2014/01021 Author: Parr, Andrew Title: Image rights in Guernsey Source: Intellectual Property Magazine. May 2014, p. 22. Summary: Guernsey law gives celebrities, sports stars and other individuals the ability to register a "personality" -- they can register "images" associated with that personality -- exclusive rights in those associated registered images -- corporate bodies, groups, fictional characters and partnerships can also be registered -- legislation allows a personality to benefit financially by exploiting the commercial value of their image rights -- various rights can be either assigned or licensed to third parties for their use in commercial arrangements -- gives clear statutory protection against the deliberate infringement and unauthorised commercial use or exploitation of those images -- complementing or expanding on protection offered by copyright and trade marks -- issue of enforcement measures beyond Guernsey's borders in the current absence of equivalent legislation elsewhere -- Guernsey Football Club (GFC) recently registered as a corporate personality -- Mo Farah's "Mobot" is a good example of an image where registration could have been extremely beneficial -- Guernsey's ground breaking legislation has begun to gain traction -manager of Manchester City, Manuel Pellegrini, has chosen to register his image rights in Guernsey. Subject: Personality rights--law and legislation--Guernsey Subject: Personality rights--tourism and recreation industry--Guernsey SNIPER No.: 2014/00241 Author: Overwalle, Geertrui van Title: The impact of the emerging market patent systems on Europe: awaiting "the rape of Europa" SNIPER Bulletin – June 2014 Page 35 of 79 Source: Abbott, Frederick M., et al. (eds.), Emerging Markets and the New World Patent Order. Cheltenham, U.K. : Edward Elgar, 2013. pp. 355-368. Summary: Impact of emerging market patent filings on Europe -- revitalising the vertical regulatory function -- revitalising the horizontal regulatory function -- impact of Europe on emerging market patent systems -- balances diverse private and public interests -- establish safeguards internal or external to patent law -- international institutions such as the World Bank are firm in suggesting that patent institutions should accommodate high quality innovation -- recommends government adopt rigorous criteria to assess patentability. Subject: Intellectual property law--Europe SNIPER No.: 2014/00764 Author: Lin, Nannan Author: Wang, Qi Title: Implications of country of completion Source: Managing Intellectual Property. China IP Focus, 2014, pp. 26-30. Summary: New provision for confidentiality examinations of inventions or utility models completed in China, but intended to be filed abroad -- confidentiality examination process -- for determining what kind of invention or utility model may be considered as completed in China -- substantive contents of its technical solution are made within the territory of China -- applicant can determine whether to file a confidentiality examination request for invention and utility models according to the specific situation -- not necessary to perform a confidentiality examination for designs in China. Subject: Minor patents--China Subject: Patents--reform--China SNIPER No.: 2014/00948 Author: Stoianoff, Natalie Title: Improving the patent system to promote innovation: an information technology case study Source: Wishart, David (ed.), Intellectual Property and New Technologies. Annandale, N.S.W.: Federation Press, October 2013. pp. 26-54. General Note: This paper was presented at the 3rd Annual Conference on Innovation and Communications Law: Re-envisioning Progress: Pluralistic Visions of Intellectual Property in a Globalised, Digitised Era, Melbourne Business School, Victoria, 29-31 May 2011. Summary: Role of intellectual property in information technology innovation -- software and business methods patents -- requirements for patentability in Australia, United States and Europe - Raising the Bar legislative amendments -- Cutler Report, Venturous Australia -- background to the Australian IT industry -- Australian and international (WIPO) patent profile -- patentable subject matter and patent classifications -- Australian, US and European patent legislation -- case law -computer-related inventions -- business methods -- arguments for and against patentability -whether software and business methods should be patent eligible subject matter -- suggested ways forward -- patent quality -- Re Freeman (US) -- Diamond v. Diehr (US) -- IBM v. Smith, Commissioner of Patents -- National Research Development Corporation v. Commissioner of Patents (NRDC) -- CCOM Pty Ltd v. Jiejing Pty Ltd -- Moore Paragon Australia Ltd v. Multiform Printers Pty Ltd -- State Street Bank and Trust Co. v. Signature Financial Group (US) -- Re Bilski (US) -- Welcome Real-Time SA v. Catuity Inc. -- Grant v. Commissioner of Patents -- In re Invention Pathways Pty Ltd -- Bilski v. Kappos (US) -- Research Affiliates, LLC v. Commissioner of Patents -- Laboratory Corp of America Holdings v. Metabolite Laboratories, Inc. (US). Subject: Australia. Intellectual Property Laws Amendment (Raising the Bar) Act 2012 SNIPER Bulletin – June 2014 Page 36 of 79 Subject: Venturous Australia (Report) Subject: Intellectual property--information technology industry--Australia Subject: Business methods--Australia Subject: Computer-related inventions--Australia SNIPER No.: 2014/00608 Author: Sexton, Christopher Title: In conversation with the Honourable Michael Kirby AC, CMG Source: Intellectual Property Forum. No. 96, March 2014, pp. 8-17 Summary: Interview with the former High Court Justice -- work with the UN Development Programme Global Commission on HIV and the Law -- current role as Chair of the UN Human Rights Commission of Inquiry investigating violations in the Democratic People's Republic of Korea -- views on the Trans-Pacific Partnership Agreement -- foundation chairman of the Australian Law Reform Commission Subject: Kirby, Michael--interviews Subject: Intellectual property industry--Australia Subject: Lawyers--Australia SNIPER No.: 2014/00235 Author: Kher, Rajeev Title: India in the world patent order Source: Abbott, Frederick M., et al. (eds.), Emerging Markets and the New World Patent Order. Cheltenham, U.K. : Edward Elgar, 2013. pp. 183-221. Summary: Indian engagement with the world in the case of patents tends to reflect the general trend seen in the case of lower and middle income countries -- trends in WIPO statistics -- Indian and trade-related indicators -- world economic order -- India's engagement with multilateral processes in the field of IP -- Indian patent system -- TRIPS Agreement -- patenting in India -- can the Indian Patent Office cope -- competition law and IPRs in India -- political economy of patents -standards of IP protection cannot be the sole or even major indicator of development. Subject: Intellectual property systems--India Subject: Economic development--India SNIPER No.: 2014/00928 Author: Cohen, Simon Author: England, Paul Title: Instructing experts in patent litigation Source: Bio-Science Law Review. Vol. 13 No. 5, 2013, pp. 161-171. Summary: Expert evidence in patent litigation -- United Kingdom -- rules for expert conduct in Civil Procedure Rules (CPR) -- role of the expert -- need to identify issues at an early stage of proceedings -- approach to instructing experts -- whether experts are used behind the scenes or to give evidence -- instructions and legal privilege -- expert role in experiments -- concurrent evidence. Subject: Expert witnesses--procedure--United Kingdom SNIPER Bulletin – June 2014 Page 37 of 79 Subject: Patent litigation--procedure--United Kingdom Subject: Legal procedure--United Kingdom Subject: Legal privilege--procedure--United Kingdom SNIPER No.: 2014/00227 Author: Fink, Carsten Title: Intellectual property activity worldwide: key trends, facts and figures Source: Abbott, Frederick M., et al. (eds.), Emerging Markets and the New World Patent Order. Cheltenham, U.K. : Edward Elgar, 2013. pp. 37-45. Summary: China filed more patents than any other office in the world in 2011 -- rise of China a significant shift in the international intellectual property system -- patent surge -- growing use of other IP rights -- changing nature of economic activity from bricks and mortar economy to the intangible economy -- China's IP rise on the performance of the economy. Subject: Intellectual property systems--China SNIPER No.: 2014/00443 Author: Burk, Dan L. Title: Intellectual property in the Cathedral Source: Beldiman, Dana (ed.), Access to Information and Knowledge: 21st Century Challenges in Intellectual Property and Knowledge Governance. Cheltenham, U.K. : Edward Elgar, 2013. pp. 95111. Summary: Compulsory licences -- systems of entitlement -- Calabresi/Melamed framework -property and liability rules -- considering reverse liability -- reverse liability in intellectual property -'call' and 'put' rules -- advantages of divided entitlements. Subject: Compulsory licensing SNIPER No.: 2014/00584 Author: Evans, Kimberley Author: Govenlock, Linda Jane Author: Jackson, Deborah R. C. Title: IP Australia moves with the times in IP oppositions Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 2, March 2014, pp. 35-39. Summary: IP Australia -- introduction of Objective Connect for use in opposition proceedings -cloud-based electronic document management system -- improving efficiency -- electronic filing of evidence -- improving efficiency of opposition proceedings -- limiting extensions of time to file evidence -- effect of the new provisions during proceedings arising from the IP Legislation Amendment (Raising the Bar) Regulations -- Australian Patent Office decisions limiting extensions of time to file evidence -- McCarthy v TRED Design Pty Ltd -- Merial Ltd v Novartis -- threshold test -- the risk of being shut out -- possible lifeline Subject: Trade mark opposition--procedure--Australia Subject: Patent opposition--procedure--Australia SNIPER No.: 2014/00240 SNIPER Bulletin – June 2014 Page 38 of 79 Author: El Said, Mohammed, 1976Title: IP policy and regulation in the Arab world: changes, challenges and opportunities Source: Abbott, Frederick M., et al. (eds.), Emerging Markets and the New World Patent Order. Cheltenham, U.K. : Edward Elgar, 2013. pp. 329-349. Summary: Development of patent and other intellectual property laws in the Arab world -- patent protection in the Arab world -- economically diversified states -- Arab countries according to their ties to trade agreements and intellectual property -- main challenges facing the Arab world in the area of patent policy -- utilisation and use of patent's regimes flexibilities -- rise of TRIPS-plus provisions and agreements -- lack of coordination and fragmentation of policy making -- lack of checks and balances -- capacity and resources -- lack of regional and international agenda -- lack a unified global position in relation to intellectual property negotiations in various forums. Subject: Intellectual property systems--Arab countries SNIPER No.: 2014/00840 Author: Maguire, Jackie Title: IP valuation: perception and reality Source: Intellectual Property Magazine. April 2014, pp. 11-12. Summary: Intellectual Property Valuation report -- summarises the conclusions and recommendations of the European Commission (EC)-appointed panel of European IP valuation experts -- consider how IP valuation plays a part in the policy for the "innovation union" and the bottlenecks that occur -- findings show there is a clear need to increase market actors' confidence and certainty in IP valuation methods -- way to stimulate IP transactions -- support IP-based financing -- give companies the tools to provide information about their IP -- will allow investors to better understand the business and the value of the company -- provide decision makers with the required information to decide whether to enforce or to license IP -- each case for valuation requires investigation -- limited understanding of the existence of accepted methods and standards for valuation and little confidence in their results -- IP considered too risky to be used as collateral for traditional loans -- recommendations. Subject: Value of intellectual property Subject: Standards (Technical)--business and professional services industry SNIPER No.: 2014/00242 Author: Tamura, Yoshiyuki, 1963Title: IP-based nation: strategy of Japan Source: Abbott, Frederick M., et al. (eds.), Emerging Markets and the New World Patent Order. Cheltenham, U.K. : Edward Elgar, 2013. pp. 371-388. Summary: IP-based nation -- Japan learning and benefitting from the experiences of the U.S. -reason for strengthening intellectual property protection, especially patent protection -- objective of IP laws -- policy speech by Prime Minister Junichiro Koizumi in 2002, enactment of the Intellectual Property Basic Act -- establishment of the Intellectual Property High Court -- history of Japan's legal system for intellectual property -- Japan's level of protection of intellectual property rights exceeded the level of protection set forth in the TRIPS Agreement. Subject: Intellectual property systems--Japan SNIPER No.: 2014/00682 Author: Kur, Annette SNIPER Bulletin – June 2014 Page 39 of 79 Author: Levin, Marianne, 1942Title: The IPT Project: proposals to reform the TRIPS Agreement Source: Ghidini, Gustavo (ed.), TRIPS and Developing Countries: Towards a New IP World Order?. Cheltenham, U.K. : Edward Elgar, 2014. pp. 163-215. Summary: Consideration of amendments to Trade-Related Aspects of Intellectual Property Rights Agreement (TRIPS) -- approach and structure of the proposal -- broader public interest-based interpretation -- individual provisions -- objectives and principles -- 'balancing clause' -- modified version of the three-step test -- interface between IP and competition law -- copyright -- trade mark law -- industrial designs -- patents. Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994 April 15)-analysis Subject: Intellectual property systems--reform SNIPER No.: 2014/00932 Author: Pila, Justine Title: Isolated human genes: the patentable equivalent of a non-copyrightable sound recording Source: Law Quarterly Review. Vol. 130 No. 2, April 2014, pp. 180-185. Summary: Patentability of isolated gene sequences -- Association for Molecular Pathology v. Myriad Genetics Inc. -- US Supreme Court finding that isolated DNA sequences are products of nature -- difference between isolated DNA and synthetic cDNA -- purpose of patent systems -apparent inconsistency with expansive position on pharmaceutical patentability -- US decision consistent with European position -- whether US Myriad decision is likely to impact competence of European Court of Justice in patent matters. Subject: Patenting of life forms--case law--United States Subject: Genes--patentability--United States Subject: Patenting of life forms--Europe Subject: Genes--patentability--Europe SNIPER No.: 2014/00998 Author: Sieńczyło-Chlabicz, Joanna D. Author: Banasiuk, Joanna Title: The issue and nature of self-plagiarism in academic work Source: Intellectual Property Quarterly. No. 2, 2014, pp. 113-124. Summary: The problem of self-plagiarism -- the concept of creativity -- definition of self-plagiarism -- types of self-plagiarism -- duplicate publication -- reuse of one's own text -- fragmented publication -- self-plagiarism before the Polish courts. Subject: Constitutional law--Poland Subject: Copyright infringement--education and training industry--Poland SNIPER No.: 2014/00677 Author: Dong, Lifang Title: Issues and strategies of China IP protection after the TRIPS Agreement SNIPER Bulletin – June 2014 Page 40 of 79 Source: Ghidini, Gustavo (ed.), TRIPS and Developing Countries: Towards a New IP World Order?. Cheltenham, U.K. : Edward Elgar, 2014. pp. 39-71. Summary: Current situation relating to the implementation of the TRIPS Agreement in China -influence on Chinese law -- amendment of China Trademark Law -- status of IP law within BRIC (Brazil, Russian Federation, India and China) countries -- issues that China should take into account -- strategies proposed by China after the TRIPS Agreement -- introduction of the patent linkage system cautiously -- establishment of a uniform intellectual property code -- leading IP cases after China's entry into the WTO -- trade barrier coming from the Western developed countries with regard to IP protection is the main obstacle to the "Going Out Policy". Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994 April 15) Subject: Intellectual property systems--China SNIPER No.: 2014/00765 Author: Lam, Cedric Author: Shi, Lilian Author: Zeng, Sherry Title: It's all in the name: protect your own Source: Managing Intellectual Property. China IP Focus, 2014, pp. 32-36. Summary: Many celebrities make more money by exploiting their names and likeness than working -- many foreign celebrities entering Chinese market -- their famous names had already been registered as trade marks by Chinese name pirates or prospectors -- statutory framework for protection -- judicial recognition of name rights -- the Kate Moss case -- the Elizabeth Taylor cases -- the Britney Spears cases -- fashion designer cases -- Georgio Armani -- Paco Rabanne -- NBA stars cases -- Michael Jordan -- Jeremy Lin -- Yao Ming and Yi Jianlian -- names of foreign celebrities will continue to attract the unwanted attention of trade mark squatters and prospectors -demand for and consumption of foreign celebrity-driven content by Chinese consumers is increasing -- more successful a foreign celebrity is, the more likely their name will be misused or misappropriated in China -- Chinese laws are available to protect their name rights -- Chinese judges are willing and able to enforce those rights. Subject: Personality rights--case law--China Subject: Personality rights--law and legislation--China SNIPER No.: 2014/00830 Author: Scott, Charlotte Title: Jack Wills wins the battle of the birds Source: Intellectual Property Magazine. March 2014, pp. 63-64. Summary: Clothing retailer Jack Wills -- uses a logo consisting of a silhouette of the side profile of a pheasant with a top hat and a cane in its claw, known as "Mr Wills" -- registered as a United Kingdom and Community Trade Mark -- Jack Wills complained its rights in Mr Wills had been infringed by House of Fraser's use of a similar logo -- Justice Arnold in the High Court, found House of Fraser's pigeon logo was likely to cause confusion -- had taken unfair advantage of the reputation of Mr Wills -- found infringement under the Trade Marks Directive -- factors that played a key role -- the average consumer -- relevance of the defendant's intention in unfair advantage -necessity of evidence in unfair advantage -- business impact. Subject: Confusing similarity--case law--United Kingdom Subject: Trade mark infringement--case law--United Kingdom SNIPER Bulletin – June 2014 Page 41 of 79 SNIPER No.: 2014/01008 Author: Kim, C. Leon Title: Judicial and legislative developments in the governance of employee inventions Source: World Intellectual Property Report. Vol. 28 No. 5, May 2014, pp. 45-47. Summary: Continuing issues and disputes about ownership and compensation of employee inventions -- response of Korean judicial and legislative branches -- Korean Patent Court decision on the ownership of an employee invention under the Korean Invention Promotions Act (KIPA) -Korean government revised the KIPA and the related Enforcement Decree -- decision in case No. 2013 Heo 2231 -- facts of the case -- analysis of the decision -- plaintiff company regulations regarding employee inventions -- statutory provisions in KIPA -- the Trial Board decision --the Patent Court decision -- key amendments to KIPA and the Enforcement Decree -- granting of a non-exclusive licence to the employer is no longer automatic -- procedure for employee invention compensation -- any employer may establish and manage an employee invention review committee -- mediation of disputes. Subject: Patent entitlement--Korea Subject: Inventors' rights--Korea SNIPER No.: 2014/00822 Author: Gigg, Sean Title: Law and order UK Source: Intellectual Property Magazine. March 2014, pp. 44-46. Summary: Counterfeits often linked to worldwide criminal organisations -- United Kingdom Border Force secures the country's border -- immigration and customs controls on people and goods -part of a multi-agency strategic approach to tackle intellectual property (IP) crime head on -- UK IP Crime Strategy provides a framework for Border Force and its partners, HM Revenue & Customs, Trading Standards and the police -- Border Force detains suspected IPR-infringing goods at ports of entry -- refers cases to the rightsholders and importers so they can agree whether to abandon the goods for destruction or to take legal action -- IP crime is not a victimless crime -- serious threat to retail business and the UK economy -- popular fakes -- IPR crime on a global scale requires serious organisation -- tackling crime at this level requires an equally organised and coordinated approach -- UK IP Crime Strategy will help to achieve this objective -- aim is to work as effectively as possible -- ease entry for legitimate goods -- stop and deter smugglers and fraudsters -advances in new screening technology and intelligence -- educating consumers. Subject: Counterfeiting--United Kingdom Subject: Intellectual property enforcement--United Kingdom SNIPER No.: 2014/00646 Author: Waelde, Charlotte Author: Whatley, Sarah Author: Pavis, Mathilde Title: Let's dance! but who owns it? Source: European Intellectual Property Review. Vol. 36 No. 4, 2014, pp. 217-228. Summary: Commercial exploitation of dance -- identify the author and owner of the copyright in the dance -- current policy and legal framework -- case studies and Unlimited legacy -- Love SNIPER Bulletin – June 2014 Page 42 of 79 Games -- The Two Fridas -- wider discussion about the legacy of the Unlimited Cultural Olympiad programme -- authorial input -- is no case law on dance -- limited case law considering the authorial requirements in respect of dramatic work -- dancers are either authors of the copyright in the arrangement of the dance on their bodies, or joint authors in the work of dance. Subject: Copyright--law and legislation Subject: Copyright--tourism and recreation industry SNIPER No.: 2014/00442 Author: Guibault, Lucie Title: Licensing research data under open access conditions under European law Source: Beldiman, Dana (ed.), Access to Information and Knowledge: 21st Century Challenges in Intellectual Property and Knowledge Governance. Cheltenham, U.K. : Edward Elgar, 2013. pp. 6394. Summary: Innovative scientific research -- 'research data' and intellectual property protection -open access licensing of research data -- open data commons -- Modular DPPL Licence -complexity of the rights status of research data -- potential to adversely affect the re-use opportunities of the collections of scientific data, unless it can be licensed effectively. Subject: Intellectual property licensing Subject: Data mining--research--Europe SNIPER No.: 2014/00437 Author: Bennett, Claire Title: Life and death for a European patent Source: Intellectual Property Magazine. February 2014, p. 76. Summary: When the European Patent Office (EPO) has granted a patent, can the domestic court hold the decision to grant the patent a nullity on the basis of a procedural error made during the grant process? -- would be an effective way to revoke a European patent, potentially across all the jurisdictions where it is in force -- increase the hurdles a patentee has to overcome in enforcing its patents -- question has been answered by the English Court of Appeal in its recent judgment in Virgin Atlantic Airways v Jet Airways & Ors -- European Patent Convention (EPC) -- is the decision right? Subject: Patent revocation--case law--United Kingdom Subject: Patent granting--United Kingdom SNIPER No.: 2014/00763 Author: Li, Johnson Author: Li, Rongxin Title: Litigation or administrative action? Source: Managing Intellectual Property. China IP Focus, 2014, pp. 20-24. Summary: Companies usually take several steps to protect their intellectual property (IP) rights in China -- apply for or register IP rights to obtain legal protection -- keep an eye on the market and industry to uncover infringement -- if infringement occurs, IP owners normally seek to battle with the infringer through judicial, administrative or other routes provided by China's IP laws -- judicial route (civil litigation) -- administrative route -- whether litigation, administrative action, or both -- SNIPER Bulletin – June 2014 Page 43 of 79 objective of IP enforcement -- available resources for action -- type of IP rights -- nature of infringer -- location of action -- collection of evidence -- impact of actions -- possibility to combine administrative and judicial actions -- alternative dispute resolution (ADR). Subject: Intellectual property litigation--China Subject: Intellectual property enforcement--China SNIPER No.: 2014/00709 Author: Dutz, Mark A. Author: Kuznetsov, Yergeny Author: Lasagabaster, Esperanza Author: Pilat, Dirk Added author: Organisation for Economic Co-operation and Development. Directorate for Science, Technology and Industry Title: Making innovation policy work: learning from experimentation electronic resource] Source: Making Innovation Policy Work: Learning from Experimentation. 2014. Summary: Making innovation policy work: benefits and lessons of experimental innovation policy - new open economy industrial policy -- "bottom of the pyramid" innovation and pro-poor growth -developing the framework for policy experimentation -- two approaches to promoting technoentrepreneurship in weak institutional environments -- supporting affordable biotechnology innovations: learning from global collaboration and local experience -- fostering innovation for green growth: learning from policy experimentation -- making evaluations count: toward more informed policy -- scaling up and sustaining experimental innovation policies with limited resources Subject: Innovation (Technological)--policy Subject: Intellectual property--policy SNIPER No.: 2014/00961 Author: Tridico, Anthony C. Author: McAnulty, Timothy P. Title: More lessons learned from the new post-grant proceedings Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent Agents. Vol. 43 No. 3, March 2014, pp. 163-165. Summary: Post-grant proceedings before the US Patent and Trademark Office (USPTO) -USPTO's Patent Trial and Appeals Board (PTAB) issued numerous interim orders -- Board's rulings -- insights on possible strategies and general lessons learned -- update on statistics -restrictions on filing a petition -- making amendments -- claims confirmable as patentable -guidance provided by the Board. Subject: Patent systems--United States Subject: Patent opposition--United States SNIPER No.: 2014/00760 Title: The most influential people in IP Source: Managing Intellectual Property. China IP Focus, 2014, pp. 4-7. SNIPER Bulletin – June 2014 Page 44 of 79 Summary: Profiles of this year's most influential people in intellectual property (IP) in China -Kong Xiangjun -- Liu Chuntian -- Song Jianhua -- Jack Chang -- Song Liuping -- TianLipu. Subject: Intellectual property industry--China SNIPER No.: 2014/00994 Author: Price, David Title: The multicultural trade mark: the registration in Australia of trade marks with foreign language elements Source: Journal of the Australasian Law Teachers Association. Vol. 1 No. 1 & 2, 2008, pp. 11-12. Summary: Trade mark registration for words with foreign language origin -- internationalisation of trade and importation of foreign trade marks -- Australian Trade Marks Office (ATMO) position on foreign language marks -- Australian determinations on foreign language applications -- Clinique Laboratories Inc. v. Luxury Skin Care Brands Pty Ltd. (La Clinica) -- Re: Opposition By Quante AG to Registration of Trade Mark Application (Quanta) -- Australian Chinese Newspapers Pty Ltd v. Melbourne Chinese Press (Li Shu calligraphy) -- Anheuser-Busch, Inc. v. Budejovicky Budvar, Narodni Podnik (Budweiser beer) -- visual effect versus translation -- Re: Application by Kuntstreetwear Pty Ltd (Kunt) -- ATMO position more closely aligned with US doctrine of foreign equivalents -- courts generally consider broader spectrum of factors. Subject: IP Australia--procedure Subject: Trade mark registrability--case law--Australia Subject: Trade mark examination--procedure--Australia SNIPER No.: 2014/00738 Author: Merwe, Theuns van de Title: Navigating Qatari law Source: World Trademark Review. No. 48, April-May 2014, pp. 92-93. Summary: Advertising in Qatar is regulated by legislation dealing directly with the issue -- also under laws addressing unfair or fraudulent business practices -- practices considered to be against good morals -- Qatar employs a dual legal system, reflecting elements of both civil and Islamic Sharia law -- Consumer Protection Law -- Advertising Law -- Electronic Commerce and Transactions Law -- Press and Publication Law -- advertisements contrary to public morals -Telecommunications Law -- Commercial Code -- Trademark Law. Subject: Competition law--Qatar Subject: Comparative advertising--law and legislation--Qatar SNIPER No.: 2014/00805 Author: Roughton, Ashley Title: The New Customs Regulation on border controls concerning counterfeit, pirated and bootleg goods Source: Queen Mary Journal of Intellectual Property. Vol. 4 No. 2, April 2014, pp. 156-159. Summary: Use of customs procedures to restrict and prevent movement of good infringing intellectual property rights across an EU member state border -- old border regulation replaced with a newer regime -- modification of the ten-day rule -- Regulation (EU) No. 608/2013. Subject: Intellectual property enforcement--reform SNIPER Bulletin – June 2014 Page 45 of 79 Subject: Counterfeiting--law and legislation--Europe SNIPER No.: 2014/00810 Author: Coraggio, Giulio Author: Zappaterra, Giulia Title: A new era for online copyright protection in Italy? Source: Intellectual Property Magazine. March 2014, p. 12. Summary: Regulation on the Copyright Enforcement on electronic communications Networks and Implementation Procedures -- approved by the Italian Communication Authority (AGCOM) -expeditious procedure to challenge copyright breaches occurring on the internet -- first draft provided for a notice and takedown procedure -- meant to be handled by the website manager -highly criticised -- AGCOM would be expected to issue a decision on matters that go beyond their current expertise in a very short timeframe -- possibly triggering abuses restricting the freedom of the internet -- AGCOM set out a new procedure -- fully managed by the authority -- the regulations do not prevent the commencement of legal proceedings before a court -- scope of the AGCOM regulations specifically excludes breaches carried out by end-users and peer-to-peer programmes -- has raised concerns from commentators -- European Commission sceptical about a number of issues -- Italy is the only EU jurisdiction that has implemented an expeditious enforcement procedure against copyright breaches taking place on the internet. Subject: Copyright infringement--Italy Subject: Copyright--law and legislation--Italy SNIPER No.: 2014/01005 Author: Hung, Genson Title: New examination guidelines on computer software related inventions in Taiwan Source: World Intellectual Property Report. Vol. 28 No. 5, May 2014, pp. 40-41. Summary: Amendments in force from 1 January 2014 for the "Computer Software Related Inventions" chapter of the Patent Examination Guidelines in Taiwan -- key changes -- guidelines for identifying an invention -- patentability of business methods clarified -- patentability of user interface and data format -- claims written in means/step-plus function language -- determining definiteness of functional language claims -- not necessary for examiner to consider the features that do not contribute to technical character of claim Subject: Patent examination—procedure--Taiwan Subject: Computer-related inventions--Taiwan SNIPER No.: 2014/00954 Author: Robers, Tim Title: A new form of intellectual property? Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent Agents. Vol. 43 No. 3, March 2014, pp. 150-152. Summary: Rights in genetic resources -- arising from the Convention on Biological Diversity (CBD) -- genetic resources research vitally important for technical progress -- justice in giving exclusive rights to innovators -- developing nations and numerous NGOs -- argue for restricting such rights to promote the widest possible use of new technology -- broad range of appropriate exceptions -- SNIPER Bulletin – June 2014 Page 46 of 79 Nagoya Protocol -- interpretation of the protocol -- requirements in Articles 4 and 7 of the Regulation. Subject: Convention on Biological Diversity (1992 June 5) Subject: Traditional cultural expressions Subject: Traditional knowledge--law and legislation--Europe Subject: Indigenous issues in intellectual property SNIPER No.: 2014/01018 Author: Lattimer, Chanel L. Title: The new frontier in an age-old problem Source: Intellectual Property Magazine. May 2014, p. 19. Summary: Mobile applications or "apps" being affected by piracy -- myriad of online counterfeit app stores -- allow users to access and illegally download copyrighted Android apps for free -- US Department of Justice's (DOJ) seizure of the Snappzmarket.net and Appbucket.net domains -conviction of the operators of Appbucket for conspiracy to commit criminal copyright infringement -operators of Appbucket illegally distributed over one million copies of copyrighted apps to its online paid subscribers -- individual app developers constitute the majority of the rightsholders victimised by app piracy -- without collective organisations, many app developers lack resources to go after counterfeiters on their own -- United States government has ongoing counterfeiting operations in other areas -- will they make a similar commitment to the mobile apps industry? -- focus is on punishment and deterrence rather than restitution -- app developers may never recover lost profits or damages -- could press the companies behind mobile operating systems for protection against piracy -- financial incentives to address the spread of pirated apps -- app developers need to collectively organise -- several piracy sites claiming users can now install pirated apps on Apple devices -- app piracy will likely get worse before it gets better. Subject: Counterfeiting--communication services industry Subject: Counterfeiting--case law--United States SNIPER No.: 2014/01009 Author: Mezzapesa, Giuseppe Author: Schiona, Lamberto Title: New Italian rules for online copyright enforcement Source: World Intellectual Property Report. Vol. 28 No. 5, May 2014, pp. 47-48. Summary: Italian Communications Authority (AGGOM) approved a new regulation in December 2013 -- rules for the protection of copyrights from violations occurring online or through audiovisual media -- regulation in force from 31 March 2014 -- sets general rules for promoting the development of digital works -- includes establishment of an ad hoc committee -- rules targeted at online violations and violations made over audiovisual media -- aimed at internet service providers supplying "mere conduit" and hosting services -- alternative to court proceedings for rights holders who believe their copyrighted works has been illegally made available via a website -- procedures Subject: Copyright enforcement--Italy Subject: Electronic copyright--Italy Subject: Carriage service providers--Italy SNIPER No.: 2014/01022 SNIPER Bulletin – June 2014 Page 47 of 79 Author: Yu-Chuang, Kuek Title: A new milestone for the internet Source: Intellectual Property Magazine. May 2014, pp. 24-25. Summary: Internet Corporation for Assigned Names and Numbers (ICANN) -- US Commerce Department's National Telecommunications and Information Administration (NTIA), announced its intention to transition its stewardship over the key internet domain name functions to global stakeholders -- DNS administered by ICANN through a contract with the NTIA, known as the Internet Assigned Numbers Authority (IANA) functions contract -- IANA functions -- draft proposal on the transition process -- new generic top-level domains (gTLDs) -- updates on trade mark related issues -- government advisory committee (GAC) -- moving forward. Subject: Internet Corporation for Assigned Names and Numbers Subject: Domain names SNIPER No.: 2014/01010 Author: O'Connor, John Title: New proposals to combat trade in counterfeit goods in the UAE Source: World Intellectual Property Report. Vol. 28 No. 5, May 2014, pp. 49-51. Summary: Combating commercial fraud in the United Arab Emirates (UAE) -- need for effective regime to guard against counterfeit products -- overview of the existing regime -- Commercial Fraud Law (CFL) -- Trademarks Law -- UAE Civil Code -- new law to repeal and replace CFL -draft provisions -- centralized authority tasked with combating commercial fraud -- centralized enforcement -- increased penalties -- increased scope -- different regulations for the various stages of counterfeiting -- distributors of counterfeit goods must provide authorities with access to relevant records -- authorities to have power to close specific offending sections of outlets -potential shortcomings in the Bill -- whether penalties severe enough -- re-export issue not addressed -- whether unregistered trade marks and look-a-like products protected. Subject: Counterfeiting--United Arab Emirates Subject: Intellectual property enforcement--United Arab Emirates SNIPER No.: 2014/00436 Author: Ricci, Sante Title: Not so FAN-tastic: Italian Supreme Court rules against Ferrari fan club Source: Intellectual Property Magazine. February 2014, pp. 74-75. Summary: Italian Supreme Court -- upheld the appeal brought by Ferrari against an unauthorised Ferrari owners' fan club, named 'Ferrari Club Milano' (FCM) for the infringement of its trade marks - appeal ruling -- Supreme Court ruling -- decision is important as it clarifies that non-profit organisations can also be held liable over trade mark infringement for abuses of third parties' trade marks. Subject: Trade mark infringement--liability--Italy Subject: Trade mark infringement--case law--Italy SNIPER No.: 2014/00647 Author: Liu, Deming Title: Of Sculpture SNIPER Bulletin – June 2014 Page 48 of 79 Source: European Intellectual Property Review. Vol. 36 No. 4, 2014, pp. 229-237. Summary: Sculpture in art -- sculpture in copyright law -- divergence between art and law -- fake art -- extending copyright protection only to true art -- meaning of sculpture -- Star Wars helmet as a sculpture -- issues with Lucasfilm -- erroneous findings of the court -- aesthetic merit -comparison with US law. Subject: Artistic works--law and legislation--United Kingdom Subject: Artistic works--case law--United Kingdom Subject: Copyright ownership--United Kingdom SNIPER No.: 2014/00962 Author: Tridico, Anthony C. Author: Mouta, Carla Title: The old/new test for determining patentability: claims must be "substantially different" from the judicial exceptions Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent Agents. Vol. 43 No. 3, March 2014, pp. 166-168. Summary: USPTO guidance to address changes in the law relating to patentable subject matter under 35 U.S.C. s 101 -- new procedure for assessing subject matter eligibility: balance factors to evaluate significant differences between the claims and judicial exceptions -- factors that weigh towards eligibility -- biologics: patentable if markedly different in structure and/or function from natural counterpart -- "ordinary meaning" as a path to establishing "markedly different" function. Subject: Patentability Subject: Intellectual property systems--United States SNIPER No.: 2014/00680 Author: Ghidini, Gustavo Title: On TRIPS' impact on 'least developed countries': the effects of a 'double standards' approach Source: Ghidini, Gustavo (ed.), TRIPS and Developing Countries: Towards a New IP World Order?. Cheltenham, U.K. : Edward Elgar, 2014. pp. 132-141. Summary: Trade-Related Aspects of Intellectual Property (TRIPS) Agreement -- developing countries have a short timeframe to apply provisions -- repudiation of the 'local working requirement' -- overall benefits associated with the reintroduction of the (industrial) local working requirement -- two simple 'redeeming' reforms -- developed versus developing countries -relations between developing and developed countries -- reforms to the present legal framework -basic principles. Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994 April 15)-analysis Subject: Intellectual property--developing countries SNIPER No.: 2014/00730 Author: Nagaoka, Ai Title: Parody trademarks and the IP High Court: the Japanese experience Source: World Trademark Review. No. 48, April-May 2014, pp. 69-71. SNIPER Bulletin – June 2014 Page 49 of 79 Summary: No legal definition of a 'parody trade mark' in the Japanese Trademark Act -- mere fact that a mark is a parody makes no difference when it comes to registrability -- recent case law -Kuma v Puma -- Shi-Sa v Puma -- Rolling Stones' tongue and lips mark -- Lambormini v Lamborghini. Subject: Famous trade marks--Japan Subject: Trade mark registrability--case law--Japan SNIPER No.: 2014/00678 Author: Rangel-Ortiz, Horacio Title: Patent and trademark rights in commercial agreements entered by the United States with Latin American nations in the first decade of the twenty-first century: Divide et Vinces Source: Ghidini, Gustavo (ed.), TRIPS and Developing Countries: Towards a New IP World Order?. Cheltenham, U.K. : Edward Elgar, 2014. pp. 72-108. Summary: Trade agreements adopted between United States and Latin American nations -patents in commercial agreements adopted in the Americas in the twenty-first century -- Doha Declaration -- patent law provisions: post-NAFTA innovations -- protection of undisclosed information involved in marketing approval proceedings -- extension of the patent term to compensate for unreasonable delays at the patent office -- delays resulting from the marketing approval process -- patentability of new uses or methods of using known products -- exhaustion of patent rights -- traditional knowledge, genetic resources and equitable sharing of benefits -- ability of Latin American nations to take necessary measures to protect public health in terms of the Doha Declaration -- trade marks in commercial agreements -- post-NAFTA innovations. Subject: Doha Declaration on TRIPs and Public Health (2001 November 14) Subject: Intellectual property--developing countries Subject: International trade--treaties SNIPER No.: 2014/01015 Author: Hutz, R. Eric Title: Patent awards decreasing?: surely not... Source: Intellectual Property Magazine. May 2014, pp. 13-14. Summary: Damages in patent cases -- court shall award damages adequate to compensate for the infringement upon finding for the patent owner -- damages can take the form of lost profits, a reasonable royalty, or a combination of both -- median damage awards as a whole have been trending down over the years -- 2013 Patent Litigation Study published by PricewaterhouseCoopers (PwC) -- analysed various patent litigation statistics for cases filed between 1995 and 2012 -- change in annual median awards since 1995 -- growing difference between bench and jury awards -- certain industries had higher median damages awards than others -- potential explanations for the trends illustrated in the PwC study -- likely that the damages trends illustrated therein will continue in 2013 and for the foreseeable future. Subject: Damages--trends--United States Subject: Patent infringement--United States SNIPER No.: 2014/00445 Author: Ellyne, Erika Title: Patent eligibility: the 'sick-man' of patent law SNIPER Bulletin – June 2014 Page 50 of 79 Source: Beldiman, Dana (ed.), Access to Information and Knowledge: 21st Century Challenges in Intellectual Property and Knowledge Governance. Cheltenham, U.K. : Edward Elgar, 2013. pp. 139-163. Summary: The patent institution: incentive theory and the social contract theory -- IP restricts the availability and use of intellectual products -- dynamic versus static efficiency -- law must takes into account conflicting interests of inventors, consumers, market competitors and follow up innovators -- patentability as a tuning mechanism -- patent eligibility and it's functions -- practice of patent eligibility. Subject: Patentability SNIPER No.: 2014/00238 Author: Vawda, Yousuf A. Title: Patent law in emerging economies: South Africa Source: Abbott, Frederick M., et al. (eds.), Emerging Markets and the New World Patent Order. Cheltenham, U.K. : Edward Elgar, 2013. pp. 286-301. Summary: Development of patent law and practice in South Africa -- background to patent legislation -- how developed countries influence policies and practices including those of the judiciary -- if differences exist what government policies are behind them -- patent policies adopted effective in curing defects found in mature systems -- national development strategy -- draft new IP policy -- industrial policy development -- policies designed to address social welfare concerns specific to South Africa -- Competition Act -- comparison with other emerging economies. Subject: Intellectual property systems--reform--South Africa SNIPER No.: 2014/00960 Author: Gaudry, Kate S. Author: Cummings, Daniel E. Title: Patent office backlog adds billions to national drug expenditure Source: Nature Biotechnology. Vol. 32 No. 5, May 2014, pp. 436-439. Summary: United States -- patent term adjustments for newly-approved and blockbuster drugs result in nearly $20 billion in added healthcare costs to US society -- how a 'bonus' patent term can arise -- when events during patent examination occur with above-threshold delays, the patent's expiration date is adjusted to partly compensate for the delay -- USPTO delays frequently lead to term adjustments -- term adjustments are frequently longer than a year -- selective analysis of term adjustment for active-ingredient patents -- root causes of delays influencing term adjustments -consequences of USPTO backlog -- strategies for combatting backlog Subject: Patent terms--pharmaceutical industry--United States Subject: Patent expiry--pharmaceutical industry--United States Subject: Pharmaceuticals--costs--United States SNIPER No.: 2014/00991 Author: Stoll, Robert L. Title: Patent trolls: friend or foe? Source: WIPO Magazine. No. 2, April 2014, pp. 21-23. SNIPER Bulletin – June 2014 Page 51 of 79 Summary: Origins of the term 'patent troll' -- characterises the activities of non-practicing entities (NPEs) or patent assertion entities (PAEs) -- experiences of the United States -- defining a troll -patent troll problem -- quality of the patents being asserted -- cost of litigating invalidity and/or noninfringement of a patent claim -- demand letters alleging infringements for license fees -transferring patent interests to shell companies -- masking ownership of a particular right -licensees vulnerable to repeated attacks from the same parent entity -- America Invents Act 2011 took significant steps forward in providing several more rapid and less expensive procedures for removing improvidently granted patents from the system. Subject: Patent trolls--United States Subject: Patent litigation--United States SNIPER No.: 2014/00963 Author: Vernaz, Nathalie Author: Haller, Guy Author: Girardin, François Author: Huttner, Benedikt Author: Combescure, Christophe Author: Dayer, Pierre Author: Muscionico, Daniel Author: Salomon, Jean-Luc Author: Bonnabry, Pascal Title: Patented drug extension strategies on healthcare spending: a cost-evaluation analysis Source: PLOS Medicine. Vol. 10 No. 6, e1001460, June 2013. Summary: Evergreening strategies developed by drug manufacturers to compete with generic medication after patent expiry -- includes marketing of slightly modified follow-on drugs -- study aimed to estimate the financial impact of these drugs on overall healthcare costs -- examine the impact of listing these drugs in hospital restrictive drug formularies (RDFs) on the healthcare system as a whole ('spillover effect') -- study method -- used hospital and community pharmacy invoice office data in the Swiss canton of Geneva to calculate use of eight follow-on drugs in defined daily doses between 2000 and 2008 -- concluded evergreening strategies have been successful in maintaining market share in Geneva, offsetting competition by generics and cost containment policies -- hospitals may be contributing to increased overall healthcare costs by listing follow-on drugs in their restrictive drug formularies (RDF) -- healthcare providers and policy makers should be aware of the impact of evergreening strategies. Subject: Evergreening--analysis Subject: Pharmaceuticals--costs Subject: Health and community services industry SNIPER No.: 2014/00955 Author: Hargreaves, Tim Author: Adamson, Kate Title: The patentee always has to prove infringement: US Supreme Court says so Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent Agents. Vol. 43 No. 3, March 2014, pp. 153-154. SNIPER Bulletin – June 2014 Page 52 of 79 Summary: US Supreme Court reversed decision of the Federal Circuit in Medtronic v Mirowski -reinforced the principle of patent litigation in the US -- patentee always has to prove infringement regardless of which side brings the case -- public interest in patent monopolies -- burden of proof required in pursuing declaratory judgments. Subject: Intellectual property licensing--United States Subject: Patent infringement--case law--United States SNIPER No.: 2014/00642 Added author: European Commission. Directorate-General for Enterprise and Industry Added author: Ecorys Added author: Technische Universiteit Eindhoven Title: Patents and standards: a modern framework for IPR-based standardization: final report Source: Patents and Standards: a Modern Framework for IPR-Based Standardization. 2014. General Note: A study prepared for the European Commission Directorate-General for Enterprise and Industry by Ecorys and Technische Universiteit Eindhoven as part of the ESCIP Group. General Note: Ref. Ares (2014)917720 - 25/03/2014 Summary: Innovation, IPR and standardisation -- economics of information and innovation -standardisation: institutions and rules -- licensing: motives and practices -- standardisation and licensing in standard dependent industries -- barriers for efficient licensing of standard related patents -- improving the framework for IPR-based standardisation -- other potential policy routes stemming from non-standard dependent industries. Subject: Standards (Technical) Subject: Intellectual property licensing Subject: Intellectual property management--Europe SNIPER No.: 2014/00239 Author: Jakkrit Kuanpoth Title: Patents and the emerging markets of Asia: ASEAN and Thailand Source: Abbott, Frederick M., et al. (eds.), Emerging Markets and the New World Patent Order. Cheltenham, U.K. : Edward Elgar, 2013. pp. 305-326. Summary: ASEAN economic community -- ASEAN IP integration -- free trade agreement: ASEAN-Australia-New Zealand FTA -- country case study: Thailand -- IP law -- research policy and technology diffusion -- backlog of applications and incomplete patent documentation -- patents and access to medicines -- specialised IP court -- receives technical assistance from different foreign agencies -- foreign aid. Subject: Intellectual property systems--Thailand Subject: Intellectual property systems--Southeast Asia SNIPER No.: 2014/00233 Author: Barbosa, Denis Borges Title: Patents and the emerging markets of Latin America: Brazil Source: Abbott, Frederick M., et al. (eds.), Emerging Markets and the New World Patent Order. Cheltenham, U.K. : Edward Elgar, 2013. pp. 135-151. SNIPER Bulletin – June 2014 Page 53 of 79 Summary: From a divided standpoint to a local centred perspective -- Brazil's new Industrial Property Code of 1996 incorporated most of the TRIPS requirements, and added to them -- TRIPS -- Brazilian IP environment -- does the patent system actually serve Brazilian interests -- Brazilian Patent and Trademark Office as a source of problems -- patents versus PVP: some further considerations -- reexamination of the biotechnology balance of interests -- reexamination of patents and changing local interests -- patents in Brazil. Subject: Intellectual property systems--Brazil SNIPER No.: 2014/00987 Author: Oyewole, Sandra Title: A peak inside Nigeria's film industry Source: WIPO Magazine. No. 2, April 2014, pp. 2-5. Summary: Investment in Nigeria's film industry Nollywood -- iROKOtv, world’s largest online distributor of licensed Nollywood films – iROKOtv’s video streaming platform created additional income-generating and distribution opportunities for filmmakers – Nigeria’s copyright law -expressly provides for written contracts to prove ownership of films, chain of title -- has not been an important factor in raising film finance in Nigeria -- distribution model of direct-to-video production -export and sale of Nigerian films without the permission of right owners -- Nigerian Copyright Commission -- public awareness campaigns -- Nigeria's Copyright Act -- role of Government. Subject: Copyright--culture and entertainment industry--Nigeria Subject: Cinematographic works--economics--Nigeria Subject: Neighbouring rights--Nigeria Subject: Piracy--culture and entertainment industry--Nigeria SNIPER No.: 2014/00837 Author: Tavener, Adam Title: Pension fund Source: Intellectual Property Magazine. March 2014, pp. 80-81. Summary: Intellectual property (IP) is one of the most valuable but least exploited assets in business, especially with small and medium sized enterprises (SMEs) -- company value is now largely dependent on intangible assets -- through risk aversion or banks' conservative lending practices linked to property as security, IP is not catered for by traditional bank lending -- lack of awareness by businesses -- few realise the monetary value that inventiveness and brand actually holds for them -- pensionledfunding.com resource recently launched QuickIP, a free online IP assessment tool -- approximate IP value -- Banking on IP? report -- more must be done to help United Kingdom's businesses identify their IP and use it to stimulate business growth -- report has identified the alternative finance market as the best way to do this -- crowd sourcing, pension-led funding and peer-to-peer lending -- case study -- Dick Cormack of DMACK Tyres -- definite IP knowledge gap that still needs to be bridged. Subject: Intellectual property awareness Subject: Value of intellectual property SNIPER No.: 2014/00825 Author: Redfearn, Nicholas Title: A perfect home for trolls SNIPER Bulletin – June 2014 Page 54 of 79 Source: Intellectual Property Magazine. March 2014, p. 51. Summary: Famous trade mark piracy -- unauthorised registration (and sometimes use) of others' well-known marks -- Indonesia and China have the worst levels of the problem -- pirates exploit weaknesses in the trade mark law classification complexity -- low bad faith thresholds -- poor well known mark protection -- these marks can be difficult to invalidate once registered -- occasionally a trade mark owner will choose to buy such marks back -- others prefer to use legal proceedings -- in Indonesia many famous brands have been to court to recover their brands -- in China complex classification system, costs of long specifications and mechanical operation by the trade mark office -- results in intellectual property (IP) holders leaving gaps for articles which they do not need registrations for -- pirates sneak in and register the same mark or Chinese language versions of the mark -- annoying unused conflicting marks on the register -- weak patent rights in China -numerous junk utility models -- case of a Taiwanese inventor Shi Chang Xu. Subject: Piracy--Asia Subject: Non-practising entities--Asia Subject: Famous trade marks--Asia SNIPER No.: 2014/00483 Author: Peifer, Karl-Nikolaus Title: Personal privacy rights in the 21st century: logic and challenges Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 3, March 2014, pp. 231-238. Summary: Privacy rights in an online world -- the privacy concept through history -- threats to privacy posed by the internet -- defining privacy rights -- areas protected -- press and the public interest -- newsworthiness of events -- duties of care -- private and public sphere -- consent and privacy -- difficulties with enforcing rights -- inadequacies of the present situation. Subject: Privacy Subject: Free speech Subject: Internet SNIPER No.: 2014/01020 Author: Conway, Michael Title: Pick your social media battles carefully Source: Intellectual Property Magazine. May 2014, p. 21. Summary: Payday loan issuer Wonga -- embroiled in a social media storm over a takedown notice issued to a Twitter user -- cited infringement of copyright in its advertising character and its logo -Wonga's strategy backfired when the user tweeted a copy of the takedown notice -- notice and original image were retweeted by thousands of users -- Wonga was forced to issue a retraction -delicate interplay between the legitimate online enforcement and avoiding the negative publicity that comes from being labelled a 'trademark bully' in social media -- two key distinguishing features of bullying -- minimising risk of being labelled a 'bully' -- pick your battles -- recent high profile cases -- weigh up the damage being caused by the alleged infringement, as compared with the potential damage of negative publicity -- any action should be proportionate to the type and seriousness of the alleged infringement -- takedown notices can come across as heavy handed -careful wording of demand letters -- enforce trade mark rights in a manner that you are fully prepared to defend publically. Subject: User-generated content Subject: Intellectual property enforcement SNIPER Bulletin – June 2014 Page 55 of 79 SNIPER No.: 2014/00816 Author: Hoy, Ruth Author: Bailey, Claire Title: Player won: mobile gaming and IP Source: Intellectual Property Magazine. March 2014, pp. 25-26. Summary: Gaming industry has transformed itself -- app based games on smartphones -- massive amounts of money being made by developers -- potential to realise rewards of investment in game development can be put at risk -- options and challenges for intellectual property (IP) protection -types of games to consider -- types of IP to consider -- game names -- Golden Balls v Office for Harmonization in the Internal Market (OHIM) -- protecting other elements of games -- colour, sound, 3D shapes -- copyright works -- scope of such protection is unclear -- type of work a gaming company can seek to assert will depend upon the game in hand -- personality rights -patents -- design rights -- domain names -- issue of ownership of the different tenets of any game's IP -- lack of international harmony in relation to the classification and protection of IP rights. Subject: Intellectual property rights--information technology industry Subject: Multimedia works SNIPER No.: 2014/00836 Author: Ferguson, Brian E. Author: Cappella, Anne M. Author: Sandhu, Charan J. Title: The potential perils of arbitration Source: Intellectual Property Magazine. March 2014, pp. 78-79. Summary: Patent litigation has exploded -- ways to reduce its attendant costs -- arbitration frequently viewed as an effective way to combat patent litigation costs -- arbitration clauses have become ubiquitous in patent licence agreements -- many reasons parties should carefully consider whether arbitration is the best way to resolve future disputes that may arise from a patent licence agreement -- weak payments are more likely to be included -- cost escalation as a result of inexperienced arbitrators and inefficient procedures -- potentially limited defences for licensees -risk of serial litigation -- no appeal -- reduction of risks with properly drafted arbitration clauses. Subject: Dispute resolution Subject: Non-practising entities SNIPER No.: 2014/00773 Author: Jiang, Jiancheng Title: Precedent fails to help applicants Source: Managing Intellectual Property. China IP Focus, 2014, pp. 78-82. Summary: Methods for the diagnosis and treatment of diseases may not be granted a patent right -- Guidelines for Examination explicitly provides that the claim of a second medical-use invention can be drafted as "use of compound X for preparing a medicament for the treatment of disease Y" -- claim type is considered as a use claim as it is a method for preparing a medicament -- does not fall within the category of methods for the diagnosis and treatment of diseases -- Chinese patent ZL94194471.9 -- appeal to the Beijing Higher People's Court -- a rare decision -- clarification by the Supreme Court -- beyond the codified laws. SNIPER Bulletin – June 2014 Page 56 of 79 Subject: Swiss-type claims--case law--China Subject: Swiss-type claims--law and legislation--China SNIPER No.: 2014/00811 Author: Joyce, Jo Title: Premier league scores a further victory against overseas broadcasts Source: Intellectual Property Magazine. March 2014, pp. 13-14. Summary: Football Association Premier League (FAPL) v QC Leisure and Murphy v Media Protection Services -- Court of Justice of the European Union (CJEU) -- FAPL stepping up efforts to tackle the use of foreign decoder equipment by pubs and clubs to receive overseas broadcasts of Premier League matches by satellite -- declaratory relief in the form of a declaration of infringement -- FAPL brought a criminal prosecution against landlady Karen Murphy -- dishonestly receiving a programme included in a broadcasting service provided from a place in the UK, with intent to avoid payment of any charge applicable to the reception of the programme -- Murphy was found guilty of the offence -- appealed to the Crown Court, then to the High Court -- High Court referred the matter to the CJEU -- the High Court, upon receiving the CJEU's response, allowed Murphy's appeal and overturned her conviction -- High Court and then the CJEU, conceded that elements of the broadcasts of matches were capable of enjoying copyright protection -- copyright in sporting events remains a contentious issue. Subject: Copyright infringement--case law--Europe Subject: Television broadcasts SNIPER No.: 2014/01001 Author: Cappuccio, Amedeo F. Title: The private nature of information: a light keeping the court's from straying into the "privacy" penumbra Source: Intellectual Property Quarterly. No. 2, 2014, pp. 159-176. Summary: United Kingdom's approach to the protection of personal information as it has evolved from the traditional action for breach of confidence -- new action of misuse of personal information should be of narrower scope than a general tort for the invasion of privacy -- current test of the "reasonable expectation of privacy" similarly introduces vagueness and uncertainty -- rationales underlying the protection of confidential and private information -- different approach focusing on the "nature of the information" is suggested -- by characterising predetermined types of relationships as relating to the claimant's "private life", the courts can express their reasoning as to the engagement of art.8 ECHR with more clarity, keeping them from conflating issues of proportionality with the claimant's prima facie entitlement to respect for his private life -- approach would be useful in cases concerning the private lives of public figures. Subject: Trade secrets Subject: Privacy SNIPER No.: 2014/00814 Author: Mak, Danton K. Title: The prize for victory?: fees, say trademark appeal board Source: Intellectual Property Magazine. March 2014, pp. 19-20. SNIPER Bulletin – June 2014 Page 57 of 79 Summary: US District Court for the Eastern District of Virginia -- trade mark applicant who challenges a decision of the Trademark Trial and Appeal Board (TTAB) in federal district court must pay the Patent and Trademark Office's (PTO) reasonable attorney's fees and other expenses -- Shammas v Focarino -- attempt by Milo Shammas to register the federal trade mark 'probiotic' in connection with fertilisers -- during the prosecution he amended his application to claim that the term had acquired distinctiveness -- Trademark Examining Attorney refused the registration -Shammas appealed the decision to the TTAB of the PTO -- TTAB upheld the decision of the examining attorney -- First District Court decision -- motion for fees and expenses -- Second district court decision -- practice notes. Subject: Trade mark attorneys--costs Subject: Trade mark litigation SNIPER No.: 2014/00945 Author: Webster, Elizabeth, 1957Added author: Intellectual Property Research Institute of Australia Title: A proposal for industry-led innovation consortia Source: IPRIA Working Paper, no. 01.14. March 2014 Summary: Australia has strengths in a number of industries -- well served by a number of government-led programs to encourage knowledge diffusion, knowledge absorption and innovation linkages -- would benefit from more industry-led consortia, similar to the rural R&D corporation program, in the non-agricultural and non-mining industries -- these R&D corporations embody the desirable features of stability, additionality, trust and connectedness -- have explicit channels of translation and industry buy-in that make them suitable architecture for industry knowledge creation and diffusion. Subject: Innovation (Technological)--policy--Australia SNIPER No.: 2014/00727 Author: Betti, Stefano Author: Mangion, Rosella Title: Prosecuting counterfeiting and organised crime: the need for a creative legal approach Source: World Trademark Review. No. 48, April-May 2014, pp. 56-59. Summary: Transnational organised crime -- involvement of a criminal group and the commission of an offence that is transnational in nature -- UN Convention on Transnational Organised Crime (UNTOC) -- transnational offences -- criminal groups involved in illicit trade tend to diversify -evolved into multi-branched companies -- goods may have changed, the methods and processes used are essentially the same -- two possible approaches to prosecuting those involved in counterfeiting offences -- evidence and fugitives located abroad -- mutual legal assistance (MLA) and extradition -- national prosecutions, the need to go beyond the strict IP offence -- INTERPOL's legal assistance programme. Subject: Counterfeiting Subject: Criminal law SNIPER No.: 2014/00999 Author: Wang, Xiaobing Author: Kireeva, Irina SNIPER Bulletin – June 2014 Page 58 of 79 Title: The protection of geographical indication in the EU and China: tracing causes of delays in the ongoing negotiation on the Co-operative Agreement on Geographical Indications Source: Intellectual Property Quarterly. No. 2, 2014, pp. 125-142. Summary: European Union and China have numerous examples of geographical indications (GIs) -- long tradition of recognising and protecting GIs -- in 2011, an attempt was made to come up with an agreement protecting and promoting this type of intellectual property -- negotiations have so far not led to concrete results or conclusions -- legal and administrative frameworks of the European Union and China -- difficulties envisaged in the two political set-ups at present -- reasons for the deadlock. Subject: Geographical indicators--law and legislation--Europe Subject: Geographical indicators--law and legislation--China SNIPER No.: 2014/00441 Author: Ricolfi, Marco Title: Public sector information as open data: access, re-use and the third innovation paradigm Source: Beldiman, Dana (ed.), Access to Information and Knowledge: 21st Century Challenges in Intellectual Property and Knowledge Governance. Cheltenham, U.K. : Edward Elgar, 2013. pp. 2362. Summary: Mechanics of public sector information (PSI) -- PSI and legal systems: the US and the EU -- review of critical PSI issues -- in search of wealth maximisation ownership regimes for PSI -wealth maximisation: access regimes for PSI -- cooperative research centres -- private businesses and or public research centres -- data in the public domain -- geographic information -- 'value' for end-users -- value added service providers linked to collecting, generating, preserving, disseminating, matching and combining data sets. Subject: Knowledge society--Europe Subject: Knowledge society--United States SNIPER No.: 2014/00685 Author: Ricolfi, Marco Title: Public sector information, intellectual property data and developing countries Source: Ghidini, Gustavo (ed.), TRIPS and Developing Countries: Towards a New IP World Order?. Cheltenham, U.K. : Edward Elgar, 2014. pp. 302-315. Summary: What is public sector information (PSI) -- wealth of information collected, generated and preserved by governments and public sector bodies -- value of the individual information obtained by them may approximate nil, if separately considered -- this changes when the data accumulate, are integrated, organised and verified -- PSI and intellectual property: the US and the EU -- developing countries and PSI -- two sets of legislative options. Subject: Value of intellectual property Subject: Intellectual property systems--economics Subject: Economic development--research Subject: Intellectual property systems--developing countries SNIPER No.: 2014/00809 Author: Mills Wade, Angela SNIPER Bulletin – June 2014 Page 59 of 79 Title: Publishers fury over Google anti-trust case Source: Intellectual Property Magazine. March 2014, pp. 10-11. Summary: EU Competition Commissioner Manuel Almunia's announcement -- he is to settle the anti-trust case with Google for abusing its 90% dominant position in search -- practices and proposed remedies by Google that have swayed Almunia into letting it off the hook -- Commission objected to the way in which Google uses third party content without authorisation and sometimes even against explicit wishes -- Google's proposed remedy is that third parties can opt out using the "Robots Exclusion Protocol" -- Commission has had concerns with the way in which Google displays its own specialised search services more favourably than those of rivals -- Google's own search services will be labelled as their own, but can be favoured and enhanced -- Google will display prominent links to three rival services following a Google run paid-for auction for the privilege -- since the launch of the investigation Google has engaged in new practices that restrict competition -- bundling, data appropriation and data blocking -- more complaints against the search giant. Subject: Competition (Economics)--Europe Subject: Intellectual property infringement--Europe SNIPER No.: 2014/00965 Author: Johnston, Keri A. F. Author: Heathcote, Marion Title: The quest for 'real' protection for indigenous intangible property rights Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 5, May 2014, p. 345. Summary: Indigenous intangible property rights and the protection of traditional knowledge -- the debate over intellectual property rights (IPRs) and protection regimes around them -acknowledged inadequacy of current protection for indigenous intangible property rights -traditional knowledge (TK), traditional cultural expressions (TCE), expressions of folklore (EoF) and genetic resources (GR) -- as a rule ownership of indigenous intangible property rights cannot be ascribed to an individual -- question of how to value indigenous IPRs -- challenge for the intellectual property law field of protecting rights of the past rather than the future. Subject: Indigenous issues in intellectual property Subject: Traditional knowledge Subject: Intellectual property--trends SNIPER No.: 2014/00485 Author: Meier-Beck, Peter Title: Quo vadis, iudicium unitarium? Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 3, March 2014, pp. 241-245. Summary: Legal procedure with respect to appeals from the court of first instance to the court of appeal under the new European patent court system -- Agreement on a Unified Patent Court ('AUPC') not yet in force -- legal remedies under Article 73(1) and (2) AUPC -- appeal (Berufung) as opposed to a complaint (Beschwerde) -- complaint against denial of leave to appeal incompatible with agreement -- Article 73 AUPC -- consequences of complaint against denial of leave to appeal -- Article 33(3) AUPC -- the desirability of forging a successful alternative to the current system of national proceedings. Subject: Unified Patent Court Subject: Patents--law and legislation--Europe SNIPER Bulletin – June 2014 Page 60 of 79 Subject: Patents--reform--Europe Subject: Legal procedure--reform--Europe SNIPER No.: 2014/01016 Author: Curley, Michael J. Title: Radical reform for patent demand letters Source: Intellectual Property Magazine. May 2014, pp. 15-16. Summary: Transparency in Assertion of Patents Act -- target the practice of sending vague patent demand letters -- requiring letters include detailed infringement contentions, among other information -- the bill would radically change pre-litigation practice for all parties engaged in patent licensing and enforcement efforts -- details of the legislation -- use of deceptive trade practices statutes to target trolls -- aimed at practices such as those made famous by MPHJ Technology Investments -- would effectively shut down shotgun licensing campaigns such as MPHJ's -- impact on other patentees, both of the 'troll' and the non-troll variety, is far less certain -- may not be worth creating a situation where all patentees are incentivised to sue first and make licensing overtures later. Subject: Non-practising entities--United States Subject: Patent litigation--reform--United States SNIPER No.: 2014/00993 Author: Kakonge, John O. Title: Raising IP awareness in Africa: a call to action Source: WIPO Magazine. No. 2, April 2014, pp. 30-32. Summary: Low levels of IP awareness among the public -- breaches of copyright or plagiarism with little realisation that it is unlawful -- grassroots ingenuity -- Richard Turere saved his family’s cattle from predators by devising an ingenious warning device known as Lion Lights -- general lack of public IP awareness -- factors fuelling piracy -- transferring lives with IP awareness -- financing intellectual property -- IP capacity-building -- IP is not generally recognised by financial institutions or right owners as a valuable capital asset that can be used as collateral to obtain business finance -- supporting SMEs -- contributing to achieve sustained economic growth and social and cultural development in Africa Subject: Intellectual property awareness--Africa SNIPER No.: 2014/00929 Author: Kuipers, Gertjan Author: Douma, Tjibbe Author: Kokke, Margot Title: Recent European developments regarding supplementary protection certificates Source: Bio-Science Law Review. Vol. 13 No. 5, 2013, pp. 178-183. Summary: Supplementary protection certificates (SPCs) -- Europe -- SPCs and the European SPC Regulation -- uncertainty after Medeva, Georgetown I and Queensland decisions -- decisions in Eli Lilly v. HGS, Georgetown II and Actavis v. Sanofi (12 December 2013) -- when an active ingredient is considered sufficiently specified in a patent claim -- whether Article 3(c) of the SPC Regulation precludes granting of SPCs for multiple products under one patent -- whether there are additional requirements for granting of SPCs -- objectives of SPC Regulation -- applying for SPCs SNIPER Bulletin – June 2014 Page 61 of 79 on the basis of a third party marketing authorisation (MA) -- effect of surrender of SPCs and withdrawal of SPC applications -- expiry of multiple SPCs based on different products protected by the same patent. Subject: European Parliament. Regulation (EEC) No 1768/92 of 18 June 1992 concerning the creation of a supplementary protection certificate for medicinal products Subject: Patent extension--pharmaceutical industry--Europe Subject: Patent extension--case law--Europe SNIPER No.: 2014/01050 Author: Nicholls, Peter Title: Registrar of Trade Marks v. Muller Source: Melbourne University Law Review. Vol. 13 No. 2, December 1981, pp. 286-288. Summary: Application in Australia to register the word "less" as a trade mark in respect of pharmaceutical products -- decision of Registrar of Trade Marks to refuse registration -- "less" had direct reference to the character or quality of the goods -- appeal by Muller to the Supreme Court of Victoria -- appeal allowed -- rejected Registrar's grounds -- found that "less" lacked the direct reference and was registrable -- Registrar's appeal to High Court of Australia -- appeal allowed -found "less" is a well-known word with immediate and easily recognizable meaning -- understood by the public as representation about its ingredients or strengths Subject: Trade mark distinctiveness--case law--Australia SNIPER No.: 2014/00834 Author: James, Will Author: Mackey, Claire Author: Williams, Bethan Title: Resolving conflict outside the courts Source: Intellectual Property Magazine. March 2014, pp. 72-74. Summary: Twitter facing allegations of patent infringement by IBM -- resolved through out of court settlement -- Twitter agreed to acquire 900 IBM patents and simultaneously entered into a crosslicence agreement with IBM -- an example of alternative dispute resolution (ADR) -- enabled a company to concentrate on its commercial aims while simultaneously extricating itself from ongoing litigation -- ADR in intellectual property (IP) disputes -- ADR procedures -- commercial negotiations -- mediation -- arbitration -- the role of ADR in United Kingdom litigation. Subject: Dispute resolution Subject: Intellectual property licensing SNIPER No.: 2014/00229 Author: Zhang, Haiyang Title: Rethinking the patent system from the perspective of economics Source: Abbott, Frederick M., et al. (eds.), Emerging Markets and the New World Patent Order. Cheltenham, U.K. : Edward Elgar, 2013. pp. 61-77. Summary: Basic economic theories behind the patent system -- debate on the patent system -what we know from past economic studies -- role of the patent system in promoting economic development -- developing countries categorised by a generally low technology field -- argument SNIPER Bulletin – June 2014 Page 62 of 79 for and against basic economic theories -- suggestions for policy makers in developing countries on designing and improving their patent institutions. Subject: Intellectual property systems--economics SNIPER No.: 2014/00997 Author: Burrell, Robert Author: Handler, Michael Title: Rethinking the presumption of registrability in trade mark law Source: Monash University Law Review. Vol. 38 No. 1, 2012, pp. 148-172. Summary: Presumption of registrability introduced into Australian trade mark law in the Trade Marks Act 1995 (Cth) -- historical materials suggest uncertainty around what it was intended to achieve -- how it was intended to operate -- legislative basis of the presumption is less secure than is generally assumed -- presumption of registrability has the capacity to obscure important issues relating to standard of proof at examination stage and during opposition proceedings -- how the presumption meshes with the role of the Trade Marks Office within the registered trade mark system -- impact of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 -operation of the presumption needs to be rethought -- what a more satisfactory presumption of registrability might look like. Subject: Australia. Trade Marks Act 1995 Subject: Trade mark registrability--Australia Subject: Trade marks--law and legislation--Australia SNIPER No.: 2014/00230 Author: Drahos, Peter, 1955Title: Rethinking the role of the patent office from the perspective of responsive regulation Source: Abbott, Frederick M., et al. (eds.), Emerging Markets and the New World Patent Order. Cheltenham, U.K. : Edward Elgar, 2013. pp. 78-99. Summary: Role of patent offices in determining the supply of patents to the market -- what ideal should guide a patent office when it comes to regulatory duties -- regulatory approaches that can help implement this ideal -- patent social contract -- patent offices in emerging markets -responsive regulation -- patent office as a responsive regulator -- Peer to Peer pilot programs -real world costs of the patent system -- diagram of responsive institutionalism for innovation -patent system reform. Subject: Intellectual property systems--reform SNIPER No.: 2014/00513 Author: Sharp, Basil Author: Morgan, Owen, Dr Author: Puckey, Adrienne Title: Review of the New Zealand intellectual property system Source: Review of the New Zealand Intellectual Property System. 2010. SNIPER Bulletin – June 2014 Page 63 of 79 General Note: Report prepared for the Ministry of Economic Development and published by Auckland Uniservices Ltd. Summary: Economic growth, productivity and intellectual property rights -- interviews and survey of IP advisors -- survey of businesses -- organisation background -- use of the IP system -- IP strategy -- benefits of using the IP system -- barriers to the use of the IP system -- IP and productivity -- recommendations for improvement -- IP knowledge and understanding -- matching intellectual property data with industry sectors -- role of government agencies -- specific issues requiring attention -- context and characteristics of New Zealand are important -- policy recommendations -- industry-government co-investment in R&D and innovation -- develop and promote a comprehensive IP communication strategy. Subject: Intellectual property systems--reviews--New Zealand SNIPER No.: 2014/00733 Author: McKenzie, Jennifer Author: Luk, Tamarah Title: Reviewing regulator action Source: World Trademark Review. No. 48, April-May 2014, pp. 82-83. Summary: Civil remedies available under statutes including the Trademarks Act -- a competitor may also complain to a regulator and request that it investigate and pursue available remedies -Competition Act is the principal statute in Canada regulating marketing activity -- deceptive marketing practices are regulated as 'reviewable conduct' -- representation must be false or misleading -- representation must be false or misleading "in a material respect" -- representation must be to the public -- false or misleading advertising can be prosecuted as a criminal offence if the representations are made "knowingly or recklessly" -- Fair Business Practices Branch of the Competition Bureau -- factors the commissioner will take into consideration in deciding whether to initiate criminal prosecution -- an adequate and proper test -- commissioner may bring an application to the Competition Tribunal, the superior court of a province or the Canadian Federal Court (Trial Division) for a determination that an advertiser has engaged in reviewable conduct -The Commissioner of Competition v Chatr Wireless Inc. Subject: Marketing--law and legislation--Canada Subject: Comparative advertising--Canada SNIPER No.: 2014/00649 Author: Bindal, Saurabh Author: Bandopadhyay, Tapas Kumar Title: Riding the unbridled horse: Indian industrial design law and the broken strings Source: European Intellectual Property Review. Vol. 36 No. 4, 2014, pp. 250-254. Summary: Analysis of the industrial design law in India -- Industrial Design Act 2000 -- lack of jurisprudential debate on design law in India -- interpretation of terminologies such as "new" or "original" -- distinction between "originality" and "novelty" -- cross-jurisdictional analysis -- United States -- United Kingdom -- Australia -- Japan -- European Union. Subject: Industrial designs--law and legislation--India Subject: Industrial design novelty--India Subject: Industrial design registrability--India SNIPER Bulletin – June 2014 Page 64 of 79 SNIPER No.: 2014/00728 Author: Abrol, Cyril Author: Bhardwaj, Samridh Title: Royalty payments and tax relief: how to keep the taxman happy in India Source: World Trademark Review. No. 48, April-May 2014, pp. 60-62. Summary: India's approach to royalties -- royalties under the new regime -- concept of an expenditure that is 'wholly and exclusively' laid out or expended for the purpose of trade -- royalty as an allowable expenditure -- considerations weighing with the tax authorities -- precautions in order to avoid adverse scrutiny by the tax authorities. Subject: Intellectual property licensing--India Subject: Taxation--India SNIPER No.: 2014/00236 Author: Payosova, Tetyana Title: Russian trip to the TRIPS: patent protection, innovation promotion and public health Source: Abbott, Frederick M., et al. (eds.), Emerging Markets and the New World Patent Order. Cheltenham, U.K. : Edward Elgar, 2013. pp. 225-251. Summary: Patent protection before the Russian accession to the WTO -- Soviet Period and the dual protection system -- the Modern Period -- patent protection and related issues as part of Russia's WTO accession negotiations -- public health and pharmaceutical sector in Russia -impact of Russia's accession to the WTO on the pharmaceutical sector -- compulsory licensing under the TRIPS Agreement -- Russia has not shown any interest in the use of the compulsory licensing mechanism. Subject: Intellectual property systems--Russia Subject: Innovation (Technological)--pharmaceutical industry--Russia SNIPER No.: 2014/00438 Author: Rendle, Adam Title: Scraping through Source: Intellectual Property Magazine. February 2014, p. 77. Summary: Court of Justice of the European Union (CJEU) -- Innoweb v Wegener -- decision on whether scraping of data from websites infringes the database rights in the target websites -- case involved a meta search engine -- CJEU decided that its operator infringed the target website's sui generis database right -- background to the case -- CJEU's reasoning in the case. Subject: Database rights--case law--Europe Subject: Intellectual property infringement--Europe SNIPER No.: 2014/00739 Author: Mełgieś, Katarzyna Title: A special place for comparison Source: World Trademark Review. No. 48, April-May 2014, pp. 94-95. SNIPER Bulletin – June 2014 Page 65 of 79 Summary: Defining advertising -- main act dealing with advertising in Poland, is the Unfair Competition Act -- acts of unfair competition in the advertising field -- comparative advertising -Polish legislature introduced the additional condition of being contrary to good practice in order to consider comparative advertising to be illegal -- remedies. Subject: Comparative advertising--law and legislation--Poland Subject: Competition (Economics)--Poland SNIPER No.: 2014/00708 Author: Hargreaves, Ian Added author: European Commission. Directorate-General for Research and Innovation Title: Standardisation in the area of innovation and technological development, notably in the field of text and data mining: report from the Expert Group Source: Standardisation in the Area of Innovation and Technological Development, Notably in the Field of Text and Data Mining: Report from the Expert Group. 2014. General Note: Expert group chaired by Ian Hargreaves. Summary: Text and data mining (TMD) -- technique for analysing and extracting new insights and knowledge from the increasing store of digital data -- "big data" -- response among publishers to encourage wider use of TDM -- growing move to "open access" scientific research in Europe -stakeholder views -- economic issues -- legal issues -- exploration of Google Scholar data. Subject: Data mining Subject: Innovation (Technological)--research SNIPER No.: 2014/00833 Author: Blum, Jeremy Title: Stopping counterfeiters at the gate Source: Intellectual Property Magazine. March 2014, p. 70. Summary: Martin Blomqvist v Rolex SA and Manufacture des Montres Rolex SA -- Court of Justice of the European Union -- background facts -- CJEU's ruling -- sale of imitation goods to an individual in an EU member state where the goods were protected by copyright or trade marks, would render the goods counterfeit or pirated goods -- they could therefore be seized by the customs authorities. Subject: Counterfeiting--Europe Subject: Intellectual property infringement--case law--Europe SNIPER No.: 2014/00772 Author: Dong, Wei Title: Strategies in seeking monetary compensation Source: Managing Intellectual Property. China IP Focus, 2014, pp. 74-76. Summary: Amendment to the existing China Trademark Law -- enhanced the position of trade mark owners in seeking more monetary compensation in trade mark infringement lawsuits -methods of deciding monetary compensation -- loss by the plaintiff and profits gained by the defendant -- choosing a method for monetary compensation -- enhancing monetary compensation -- newly adopted punitive damages provision -- two preconditions which need to be met before SNIPER Bulletin – June 2014 Page 66 of 79 punitive damages can be granted -- proving bad faith on the part of the infringer -- showing that there are severe consequences caused by the infringement. Subject: Damages--China Subject: Trade mark infringement--China SNIPER No.: 2014/00831 Author: Evans, Taylor Author: Perumal, Karthika Author: Whittle, Jeffrey S. Author: Samardzija, Michael R. Title: Supreme Court imposes more burdens on patent licensors Source: Intellectual Property Magazine. March 2014, pp. 65-66. Summary: Medtronic, Inc v Mirowski Family Ventures -- United States Supreme Court -- held that a patent licensor has the burden of proving infringement in a declaratory judgment suit brought by a licensee -- licensing deal and enforcement -- Medtronic strikes back -- amicus attempts to block route -- Supreme Court finds path -- burden of proof -- consideration for parties going forward. Subject: Intellectual property licensing--United States Subject: Patent infringement--case law--United States SNIPER No.: 2014/00820 Author: Adamo, Kenneth R. Author: Higer, David W. Author: Goryunov, Eugene Title: Survey of US court decisions to stay part 2: where stays were granted Source: Intellectual Property Magazine. March 2014, pp. 37-41. General Note: Second article in a series of two. See also: 2014/00425 Summary: How United States district courts have analysed motions seeking a stay pending resolution of an inter partes review (IPR) proceedings at the US Patent and Trademark Office (USPTO) -- review of cases granting a stay and identifying considerations central to each court's decision -- stay pending resolution of an IPR is within the sound discretion of the US district court -generally apply a three-factor test when considering a stay motion -- stage of the proceedings when stays are granted -- stay pending resolution of an IPR may also simplify the issues involved in a US district court case -- some claims may be cancelled or through application of IPR-related estoppel provisions -- stay is more likely to be imposed where there is no undue prejudice or clear tactical disadvantage to the non-moving party. Subject: Patent opposition--case law--United States Subject: Patent litigation--United States SNIPER No.: 2014/01017 Author: Rendle, Adam Title: Taking exception Source: Intellectual Property Magazine. May 2014, pp. 17-18. SNIPER Bulletin – June 2014 Page 67 of 79 Summary: Proposed reform of United Kingdom copyright exceptions -- number of new and revised exceptions will be introduced -- fair dealing quotation of works -- fair dealing with works for the purposes of caricature, parody or pastiche -- making of personal copies of works (other than computer programs) for private use -- provision, known as "contract override" -- renders unenforceable a term of a contract "to the extent [it]...purports to prevent or restrict" users from relying on these exceptions -- provision could have widespread commercial effects -- does not provide expressly for the consequences of unenforceability -- how does contract override apply to contracts governed by a foreign law? Subject: Fair use (Copyright)--reform--United Kingdom Subject: Fair use (Copyright)--law and legislation--United Kingdom SNIPER No.: 2014/00951 Author: Leiboff, Marett Title: Talkin' 'bout law's generations: pop culture, intellectual property and the interpretation of case law Source: Wishart, David (ed.), Intellectual Property and New Technologies. Annandale, N.S.W.: Federation Press, October 2013. p. 99-116. General Note: This paper was presented at the 3rd Annual Conference on Innovation and Communications Law: Re-envisioning Progress: Pluralistic Visions of Intellectual Property in a Globalised, Digitised Era, Melbourne Business School, Victoria, 29-31 May 2011. Summary: Generational differences in legal interpretation -- intellectual property and pop culture -Australia -- empirical study, Talkin' 'Bout Law's Generations -- whether different generations interpret legal information differently, based on social, political, historical and linguistic knowledge, including pop culture -- Hansen v. Bickfords -- Monster energy drink -- passing-off -- recognition of pop culture references. Subject: Legal procedure--interpretation--Australia Subject: Passing-off--case law--Australia SNIPER No.: 2014/00231 Author: Sampath, Padmashree Gehl Title: The technology transfer debates and the role of emerging economies Source: Abbott, Frederick M., et al. (eds.), Emerging Markets and the New World Patent Order. Cheltenham, U.K. : Edward Elgar, 2013. pp. 100-118. Summary: International technology transfer debate -- emerging economies: new growth prospects, new insights -- rise in South-South trade and investment -- cases of South-South technological change -- South-South value chains and production networks -- firm-level collaborations and joint ventures -- can emerging economies provide a new impetus to the technology transfer discourse -- can emerging economies facilitate greater technological exchange -- growing South-South technological impact. Subject: Technology transfer--developing countries Subject: Innovation (Technological)--developing countries SNIPER No.: 2014/01003 Author: Radcliffe, Jonathan Title: Top 10 significant English patent cases (part 1) SNIPER Bulletin – June 2014 Page 68 of 79 Source: World Intellectual Property Report. Vol. 28 No. 5, May 2014, pp. 33-37 Summary: Significant decisions delivered by the English patent courts in 2013 -- English patent courts becoming a key European venue of choice for patent disputes -- facts of the cases -analysis of the decisions -- extending jurisdiction to hear non-English patent infringement cases -Actavis v. Eli Lilly -- new approach to staying litigation if EPO opposition co-pending -- IPCom v. HTC -- subsequent revocation or amendment nullifies earlier damages awards -- Virgin v. Zodiac -when making spare parts amounts to patent infringement -- Schutz v. Werit -- groundless threats of patent infringement -- Sudarshan v. Clariant Subject: Patents--case law--United Kingdom SNIPER No.: 2014/00832 Author: Price, Richard Title: Total recall of Greek yoghurt Source: Intellectual Property Magazine. March 2014, pp. 67-68. Summary: Court of Appeal has upheld an injunction granted to FAGE, manufacturer of Total Greek Yoghurt, that prevents rival US-based manufacturer Chobani from describing a yoghurt it sells in the United Kingdom as "Greek Yoghurt" -- FAGE UK obtained an interim injunction against Chobani -- expedited trial -- victory for FAGE -- its claim for extended passing-off was upheld and Chobani's counter-claim for trade libel was dismissed -- Chobani argued that the term "Greek Yoghurt" referred to the method of manufacture, rather than the place -- argument was rejected -FAGE obtained a permanent injunction against Chobani prohibiting it from passing off their USmade yoghurt in the UK as "Greek Yoghurt" -- Chobani sought to overturn the injunction in a Court of Appeal hearing -- grounds of Chobani's appeal -- distinctiveness -- consumer perceptions -European regulation. Subject: Passing-off--case law--United Kingdom Subject: Injunctions--United Kingdom SNIPER No.: 2014/00953 Author: Lawrence, Malcolm Title: Toxic priority: a 2013 epilogue Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent Agents. Vol. 43 No. 3, March 2014, pp. 142-149. Summary: Toxic priority as a proven IP risk -- European Patent Convention applications and divisionals – Poisonous Divisions: judicial perspective and incidence -- (T1496/11) -- judicial incidence of poisonous priority documents -- division myths -- where T1222/11 helped and where it may not -- diagrams -- 'clearly defined test' -- Article 84 European Patent Convention -- looking forward drafting practice -- state of law. Subject: Divisional applications (Patents) Subject: Patent systems--reform--Europe SNIPER No.: 2014/00776 Author: Koo, Anna Mae Title: Trade mark squatting ring-fenced Source: Managing Intellectual Property. China IP Focus, 2014, pp. 96-100. SNIPER Bulletin – June 2014 Page 69 of 79 Summary: China has a first-to-file system -- trade mark squatting is a particular concern to foreign trade mark owners -- frequently find their trade mark already registered when they wish to expand their business to China -- current law and regulations put them in a difficult position to oppose the bad-faith applications -- amendments to China's New Trademark Law -- general provisions -principle of good faith and unfair competition -- codification of principle-agent relationship in bad faith registration -- opposition, standing and consequences -- trade mark registration procedures -trade mark agents -- trade mark fair use -- increased damages for trade mark infringement -retrospective effect of trade mark rights on decisions or judgements -- looking forward. Subject: Trade mark infringement--China Subject: Trade marks--law and legislation--China SNIPER No.: 2014/00801 Title: Trade mark survey 2013 Source: Managing Intellectual Property. No. 237, March 2014, pp. 46-114. General Note: Second article in a series of three. See also: 2014/00000 for Patent survey 2010; 2014/00000 for Copyright survey 2010. Summary: Rankings of leading trade marks firms in more than 80 jurisdictions -- ranked in tiers for prosecution work and contentious work -- Africa, Middle East, Americas, Asia, and Europe -research was conducted, between September 2013 and January 2014. Subject: Trade mark attorneys--statistics Subject: Intellectual property industry--statistics SNIPER No.: 2014/00444 Author: Senftleben, M. R. F. (Martin R. F.) Title: Trademark law and the public domain Source: Beldiman, Dana (ed.), Access to Information and Knowledge: 21st Century Challenges in Intellectual Property and Knowledge Governance. Cheltenham, U.K. : Edward Elgar, 2013. pp. 112-138. Summary: Conceptual contours of the public domain in relation to the trade mark system -definitions based on legal status -- relative exclusion following from the requirement of distinctiveness -- absolute exclusion from trade mark protection -- limited exceptions -- instruments for preserving the public domain. Subject: Trade mark expiry Subject: Public domain SNIPER No.: 2014/00640 Added author: UNITAID Initiative Added author: World Health Organization Title: The Trans-Pacific Partnership Agreement: implications for access to medicines and public health Source: Trans-Pacific Partnership Agreement: Implications for Access to Medicines and Public Health. 2014. General Note: UNITAID is hosted and administered by the World Health Organization. General Note: "Technical report". SNIPER Bulletin – June 2014 Page 70 of 79 Summary: Patents -- data exclusivity and patent linkage -- trade marks and copyright -enforcement of intellectual property rights -- investment -- pharmaceutical pricing, financing and reimbursement of medicines -- analysis of provisions -- implications for public health and access to medicines. Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994 April 15) Subject: Compulsory licensing--pharmaceutical industry Subject: Pharmaceutical industry Subject: Patent systems SNIPER No.: 2014/00735 Author: Narula, Ranjan Title: Treading a fine line Source: World Trademark Review. No. 48, April-May 2014, pp. 86-87. Summary: Rights holders increasingly resorting to comparative advertising in a bid to capture market share -- India has no specific legislation governing comparative advertising -- no directives or guidelines outlining the boundaries of what is permissible -- case law has evolved through various court rulings -- Advertising Standards Council of India (ASCI) guidelines -- advisory only -does offer a complaint process, this it is generally perceived to be time consuming -- parties often resort to litigation -- Trademarks Act -- protecting consumers -- honesty in disparagement claims. Subject: Free speech--India Subject: Comparative advertising--India SNIPER No.: 2014/00930 Author: England, Paul Title: Uniform trade secrets protection for Europe? Source: Bio-Science Law Review. Vol. 13 No. 5, 2013, pp. 184-186. Summary: Trade secrets -- Europe -- proposed Directive on Trade Secrets and Confidential Business Information -- common definitions of trade secrets and unlawful acquisition and use -infringing goods -- preliminary measures and injunctions -- final remedies -- safeguards and proportionality -- bad faith -- future steps and ongoing negotiation. Subject: Trade secrets--law and legislation--Europe SNIPER No.: 2014/00243 Author: Abbott, Frederick M. Title: The United States response to emerging technological powers Source: Abbott, Frederick M., et al. (eds.), Emerging Markets and the New World Patent Order. Cheltenham, U.K. : Edward Elgar, 2013. pp. 391-406. Summary: Increasing technical capacity in emerging economy countries -- shift from goods-based to service-based economies -- United States Section 337 of the Tariff Act of 1930 -- TRIPS Agreement -- new form of competition -- US responses to global competition -- digital and other integration of the US IP framework -- addressing unfair competition -- bilateral forums -- plurilateral forums -- addressing competitions in innovation from emerging markets. Subject: Intellectual property systems--United States SNIPER Bulletin – June 2014 Page 71 of 79 SNIPER No.: 2014/00956 Author: Fox, Nicholas Author: Parker, Scott Title: UPC Drafting Committee clarifies Rules but political battles remain Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent Agents. Vol. 43 No. 3, March 2014, pp. 155-157. Summary: Unitary Patent Court (UPC) Drafting Committee published revised set of rules of the UPC -- Court of Appeal powers over procedural appeals clarified -- languages regime changed -rules and opt-outs clarified -- Committee holds firms on bifurcation, provisions measures and injunctions -- Amicus brief's rejected -- representation -- removes ambiguity. Subject: Unified Patent Court Subject: Patent systems--Europe Subject: Legal procedure--Europe Subject: Patent litigation--Europe SNIPER No.: 2014/00957 Author: Johnson, Alan Title: The UPC: one year on Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent Agents. Vol. 43 No. 2, February 2014, pp. 157-159. Summary: European Unified Patent Court (UPC) -- progress to ratification -- 16th draft to Rules of Procedure -- Austria, Malta and France have ratified -- location of the courts -- three branches of the central division, 11 local divisions and three regional divisions -- which divisions will get the business -- German local divisions will flourish -- London a popular venue within the UPC as a raft of technically competent native English speakers on hand. Subject: Unified Patent Court Subject: Patent systems--Europe Subject: Legal procedure--Europe SNIPER No.: 2014/00793 Author: Loney, Michael Title: US declares war on patent trolls Source: Managing Intellectual Property. No. 237, March 2014, pp. 18-20. Summary: In the United States rhetoric against patent trolls had been getting stronger -- House of Representatives passed the Innovation Act in December -- Senate is expected to pass its own legislation soon -- state attorneys general are also turning up the heat on trolls -- Vermont and Nebraska have passed legislation in the fight against patent trolls -- other states have taken notice of the issue -- New York State announcing a settlement with MPHJ -- settlement obligations -provides a model for all states and federal regulators -- MPHJ sued the Federal Trade Commission (FTC) and its individual commissioners -- some observers worried by the increasing attacks on patent trolls at the state level -- distinctions not being made between patent trolls and patent quality -- legitimate enforcement is also under threat -- other drawbacks of the state based system -piecemeal approach -- using state law to take on abuses by trolls is untested -- question of whether SNIPER Bulletin – June 2014 Page 72 of 79 state action is necessary at all -- likelihood of Congress passing legislation to tackle the troll issue - action at state level could serve to increase pressure and spur action at the federal level. Subject: Patent trolls--United States Subject: Patents--law and legislation--United States SNIPER No.: 2014/00931 Author: Browne, Bill Title: Using fair use: the consequences of the inquiry into copyright and the digital economy for librarians and information professionals Source: Online Currents. Vol. 28 No. 1, March 2014, pp. 13-20. Summary: Copyright exceptions and fair use -- Australian Law Reform Commission (ALRC) Inquiry into Copyright and the Digital Economy -- background to the inquiry -- ALRC-proposed reforms -- context around fair use -- effects on libraries and information professionals -- fair use -liability for third party actions -- non-consumptive use -- transformative use -- orphan works -educational licensing -- government use exceptions -- private and domestic use -- copyright exceptions -- preservation -- document supply for research and study -- technological protection measures and contracting out of exceptions -- statutory licensing -- educators and the Crown -mass digitisation -- other matters considered. Subject: Australia. Law Reform Commission. Copyright and the Digital Economy Subject: Fair use (Copyright)--reviews--Australia Subject: Copyright--reviews--Australia Subject: Electronic copyright--reviews--Australia Subject: Fair use (Copyright)--knowledge industry--Australia SNIPER No.: 2014/00996 Author: Mateos-Garcia, Juan Added author: Innovation Policy Platform Added author: World Bank Title: Using intellectual property to raise finance for innovation Source: Using Intellectual Property to Raise Finance for Innovation. 2014. General Note: "Case Study". Abstract: Intellectual property assets such as patents, copyrights or trade marks can help innovative firms gain access to financing -- collateral or security for loans -- signalling the quality of a venture to investors -- policy options to encourage greater use of IP assets to channel financing into innovation -- increasing levels of awareness -- reducing transaction costs in IP finance markets -- rising importance of innovation-related intangible assets -- barriers to financing for firms focused on intangible assets -- role of IP assets in the financing of innovation -- access to equity finance -obstacles to IP-based financing of innovation -- policy options. Subject: Intellectual capital Subject: Value of intellectual property Subject: Financial management SNIPER No.: 2014/00804 SNIPER Bulletin – June 2014 Page 73 of 79 Author: Rodrigues Jr, Edson Beas Title: Using the TRIPS Agreement's unfair competition clause to curb the misappropriation of biological resources, traditional knowledge and expressions of folklore in user countries Source: Queen Mary Journal of Intellectual Property. Vol. 4 No. 2, April 2014, pp. 139-155. Summary: Intangible biocultural heritage (IBH) -- intangible biocultural resources (IBRs) -misappropriated IBH belonging to communities in developing countries by means of claiming intellectual property rights (IPRs) over products derived -- developing countries unsuccessfully endeavoured to reach international agreements suitable for protecting IBRs -- Agreement on Trade-Related Aspects of Intellectual Property Rights -- countries committed to grant legal protection to intellectual products in general, even if derived from IBRs -- criticism of the TRIPS Agreement -- provision which can be used by countries of origin of IBRs as a tool to require from user countries of IBRs the adoption of effective measures designed to curb the misappropriation of these intangible goods. Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994 April 15) Subject: Traditional knowledge Subject: Traditional cultural expressions SNIPER No.: 2014/00484 Author: Lingen, Sandra von Title: Vehicle Navigation System Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 3, March 2014, pp. 239-240. Summary: The German Federal Court of Justice (BGH) declared patent invalid as claim not based on an inventive step -- Case No. X ZR 27/12 -- process and device for route instructions -- outline of case. Subject: Patent validity--case law--Germany Subject: Inventive step--case law--Germany SNIPER No.: 2014/00988 Author: Greenspan, David Author: Boyd, S. Gregory Author: Purewal, Jas Title: Video games and IP: a global perspective Source: WIPO Magazine. No. 2, April 2014, pp. 6-11. Summary: Creative industry combined with use of rapidly changing technology -- IP rights are associated both with the tools used to develop games and the content included in a game -- new market entrants with information about how to develop a proactive strategy to secure the IP right -distribution and use -- range of legal and business issues facing developers at various stages of the process of developing a game -- transforming from a concept into a marketable product -underlines the importance of negotiating contracts to define who owns the IP rights in a work -significant risks and uncertainties -- development of a proactive IP strategy -- trade mark protection -- changing patterns of ownership -- challenges are further compounded by the lack of harmonisation of the laws applicable to the video game industry around the world. Subject: Intellectual property ownership--information technology industry Subject: Multimedia works SNIPER Bulletin – June 2014 Page 74 of 79 SNIPER No.: 2014/00648 Author: Khaosaeng, Khanuengnit Title: Wands, sandals and the wind: creativity as a copyright exception Source: European Intellectual Property Review. Vol. 36 No. 4, 2014, pp. 238-249. Summary: Creative intellectual activity -- excessive scope of copyright protection -- derivative works -- works built on cumulative creativity -- copyright and creativity -- copyright exception for creative subsequent works -- fair use doctrine analysis -- exclusive rights of the copyright owner -three crucial elements of the new creativity exception -- creativity input -- necessity to use the copyright protected work -- reverse economic effect on the market of the derived work. Subject: Fair use (Copyright)--United States Subject: Copyright infringement SNIPER No.: 2014/00761 Author: Hu, Gang Author: Wang, Fang Author: Qiu, Jing Title: A welcome change for trade mark owners Source: Managing Intellectual Property. China IP Focus, 2014, pp. 8-12. Summary: China's new Trademark Law -- major changes -- allows the registration of sound marks for the first time -- a multi-class application system put into place to speed up the registration process -- reintroduces the practice of office action -- China Trademark Office (CTMO) will issue examination opinions, within the substantive examining procedure, to request that applicants provide explanations and amendments -- provides a chance for applicants to make amendments and explanations before the approval or refusal of the registration -- new law allows e-filing -- time calculable examinations -- raised infringement compensation for squatters -- widened infringement scope -- more infringement situations -- higher compensation -- prior use -- trade mark agents -well-known trade marks -- new opposition procedure -- more choices when filing applications -more efficiency in examinations. Subject: Trade marks--law and legislation--China Subject: Trade marks--reform--China SNIPER No.: 2014/00802 Author: Floyd, Christopher David Title: What has intellectual property done for the law? Source: Queen Mary Journal of Intellectual Property. Vol. 4 No. 2, April 2014, pp. 106-117. Summary: 2013 Herchel Smith Annual lecture -- delivered by Floyd, LJ -- considered judicial specialisation -- highlighted how many landmark cases began as intellectual property disputes -innovations successful and unsuccessful which were started within intellectual property courts -intellectual property law has assisted greatly in the wider development of the law -- the wider implications of intellectual property judgments on the general law. Subject: Intellectual property law--Europe Subject: Intellectual property systems--Europe SNIPER Bulletin – June 2014 Page 75 of 79 SNIPER No.: 2014/00829 Author: Evans, Huw Author: Hidaka, Seiko Title: What makes an inventor so special? Source: Intellectual Property Magazine. March 2014, pp. 60-62. Summary: United Kingdom Patents Act 1977 -- statutory right for employee inventors to be awarded additional compensation over and above their salary for their patented inventions that are of 'outstanding benefit' to their employer -- Kelly v GE Healthcare case in 2009 -- court ordered that an employee inventor should receive additional compensation -- Intellectual Property Office (IPO) has now delivered its verdict in the Shanks v Unilever case -- decided that a benefit of twenty four million pounds did not amount to outstanding benefit -- statutory provisions -- Kelly case -background to the latest Shanks decision -- benefit of the Shanks patents -- whether outstanding? - fair share. Subject: Patent entitlement--case law--United Kingdom Subject: Inventors' rights--United Kingdom SNIPER No.: 2014/00797 Author: Cochrane, David Title: What's behind the drug patent furore in South Africa? Source: Managing Intellectual Property. No. 237, March 2014, pp. 34-35. Summary: South African government published its draft National Policy on Intellectual Property -prompted a furore -- report of a leaked document reflecting concerns among innovator pharmaceutical companies and a passionate response from the country's health minister -- debate partly reflected concerns about access to medicines in South Africa -- revealed various inconsistencies and oversights in the drafting of the Policy -- hoped that a revised and corrected Policy will be circulated for further comment from stakeholders -- amendments to the South African Patents Act are quite a way off -- public will be given an opportunity to submit comments during the legislative process. Subject: Intellectual property--policy--South Africa Subject: Patents--pharmaceutical industry--South Africa SNIPER No.: 2014/00842 Author: Gills, Jeanne M. Title: When can a case be considered exceptional? Source: Intellectual Property Magazine. April 2014, pp. 16-17. Summary: In United States litigation, each party typically bears its own attorneys' fees regardless of the outcome -- Supreme Court heard oral arguments for Octane Fitness and Highmark -- two cases seeking clarification of the fee shifting provision of the Patent Act -- prevailing party may be awarded its attorney fees if the district court deems the case "exceptional" -- district courts determine whether a case is exceptional using the two part test articulated in Brooks Furniture -considers whether the litigation was brought in subjective bad faith and was objectively baseless -until Federal Circuit's Highmark decision, both prongs of a district court's determination were generally reviewed under an erroneous standard -- Octane Fitness -- Highmark. Subject: Patent litigation--costs--United States Subject: Patents--case law--United States SNIPER Bulletin – June 2014 Page 76 of 79 SNIPER No.: 2014/00736 Author: Lucchini, Marco Author: Verducci-Galletti, Simone Title: When commercial speech becomes unlawful Source: World Trademark Review. No. 48, April-May 2014, pp. 88-89. Summary: Different bodies responsible for assessing the lawfulness of comparative advertising -courts, Advertising Self-Regulation Panel and the Competition Authority -- they sometimes deliver divergent decisions in similar (or even identical) cases -- reason for the discrepancies can be found in the peculiarities of these three bodies -- their main features -- illustrated through recent cases dealing with comparative advertising. Subject: Competition (Economics)--Italy Subject: Comparative advertising--case law--Italy SNIPER No.: 2014/00676 Author: Matthews, Duncan, 1965Title: When framing meets law: using human rights as a practical instrument to facilitate access to medicines in developing countries Source: Ghidini, Gustavo (ed.), TRIPS and Developing Countries: Towards a New IP World Order?. Cheltenham, U.K. : Edward Elgar, 2014. pp. 12-38. Summary: Non-governmental organisations (NGOs) seek to draw attention to the potentially adverse effects of patents for pharmaceutical products --- particularly for people living with Human Immunodeficiency Virus/Acquired Immune-Deficiency Syndrome (HIV/AIDS) -- reshaping the international debate about the relationship between IP rights and access to medicines -- framing IP-related debates by using emotive language of human rights. Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994 April 15) Subject: Intellectual property--developing countries Subject: Pharmaceutical industry--developing countries SNIPER No.: 2014/00734 Author: Wu, Gloria Q. Title: When the battle heats up Source: World Trademark Review. No. 48, April-May 2014, pp. 84-85. Summary: Battle between Guangzhou Pharmaceutical and JDB Beverage Co, Ltd over Chinese herbal tea -- a red can, sold by JDB and a green carton, sold by Guangzhou Pharmaceutical -both types of packaging used the same trade mark -- Guangzhou Pharmaceutical initiated various legal actions against JDB?s distributors on the grounds of trade mark infringement -- JDB was forced to stop using the trade mark on the packaging of its herbal tea -- new battle began over the advertisements used by the two companies -- infringement and false publicity -- unfair competition -- reputation of a product rests with the trade mark and whoever owns the trade mark should enjoy the benefit of such reputation -- in some licence relationships the licensee may contribute to the brand much more than the licensor – court’s reasoning focused on ownership of the trade mark, but failed to recognise the copyright in the slogan created by JDB. Subject: Competition (Economics)--China SNIPER Bulletin – June 2014 Page 77 of 79 Subject: Comparative advertising--China Subject: Trade mark infringement--China SNIPER No.: 2014/00815 Author: Heizler, Laurie Author: Maunder, Luke Title: Who ate all the candy? Source: Intellectual Property Magazine. March 2014, pp. 22-23. Summary: Candy Crush Saga game -- popular smartphone game -- owner of the game (King.com) is seeking trade mark protection for the brand -- secured registration of "Candy" as a Community trade mark -- application for the "Candy" trade mark is pending in the United States -uproar among some games developers and a protest group called Candy Jam -- aim is to fight trade mark trolling -- King.com also seeking protection for the word "Saga" -- Candy Jam outraged by the prospect of vigorous enforcement of the trade mark in Europe -- advocated that its members make computer games that involve depictions of candies and use the word "candy" as a brand name -- King.com is perfectly at liberty to pursue infringers as it sees fit -- infringement action -aggressive litigation -- danger of dilution -- ethical and reputational issues attached to the enforcement of arguably valid trade marks -- offer a licence at a reasonable price -- simple request that the infringer ceases the infringement, but acknowledges and accepts the rights of the trade mark proprietor. Subject: Trade mark enforcement Subject: Trade mark registration SNIPER No.: 2014/00800 Author: Newberg, Brad R. Title: Why the Supreme Court should allow laches as a copyright defence Source: Managing Intellectual Property. No. 237, March 2014, pp. 42-43. Summary: Petrella v MGM case -- concerns a plaintiff who claims her father's screen play was the basis for the 1980 film Raging Bull -- Supreme Court must consider the issue of whether the equitable defence of !aches can apply in copyright cases -- reversal of Petrella could lead to a spike in cases where plaintiffs wait until a case is harder to disprove to pursue litigation -comments made by justices during oral arguments troubled some -- concern that the Supreme Court will not address the wilfulness debate or will allow !aches, but not for claims of wilful infringement -- Supreme Court's decision is likely to focus on availability of tolling as an equitable means to extend the statutes of limitation -- what the !aches defence bars if it is successful -- a decision for Petrella could hurt most copyright owners. Subject: Legal defences--United States Subject: Copyright infringement--United States SNIPER No.: 2014/00723 Title: You need to know about...the great WeChat migration Source: World Trademark Review. No. 48, April-May 2014, p. 41. Summary: Social app Weixin, known as WeChat in English -- taking China by storm, as users migrate from other social media offerings -- infringers will follow -- trade mark counsel should keep the platform on their radar -- prepare their policing strategies accordingly -- WeChat has fast SNIPER Bulletin – June 2014 Page 78 of 79 become the app of choice -- users won over by its multi-faceted functionality, supporting voice messaging, group discussions, quick response (QR) code technology and online payment functions -- counsel in China already alert to the risk of illicit activity -- site should be included on monitoring lists -- counsel can conduct searches of the platform's public accounts for key terms such as brand names -- add the account as a contact in order to learn more about potential infringement -- difficult for counsel to monitor infringement -- majority of infringers utilise the platform merely to promote their counterfeit products, with transactions taking place elsewhere -counsel should attempt to purchase products from the party so that they can check their authenticity -- allows counsel to obtain more information about the party, the form and scale of production, the amount of goods it may have and whether it is a manufacturer or a retailer. Subject: Social networking--China Subject: Intellectual property enforcement--China SNIPER No.: 2014/00823 Author: Miller, Camille M. Author: Lattimer, Chanel L. Title: Zombie killers: how Microsoft uses IP to fight cybercrime Source: Intellectual Property Magazine. March 2014, pp. 47-48. Summary: Online fraud has become a lucrative illegal business -- many people fall victim to cybercrime each year, costing consumers and the global economy billions of dollars -- malware attacks on Target's point-of-sale (POS) system -- perpetrating online fraud -- infestation of users' computers with malicious software -- certain forms of malware turn a user's computer into a 'zombie' -- allow cybercriminals to remotely access it for nefarious purposes -- collection of zombie computers constitutes a 'botnet' -- as part of a botnet, the zombie computer has the ability to send and receive communications, instructions, and code to and from other botnet computers, all at the request of the cybercriminal/malware-botnet creator -- send spam emails perpetuating consumer fraud schemes -- click fraud -- redirect users to search results of the botnet operators choosing -Microsoft v John Does 1-8 -- Microsoft's most successful attempt at disrupting botnet cybercrime -Microsoft's botnet operations met with a mix of praise and criticism -- important for all companies to be educated on security risks and the types and trends of cybercrime that might befall them -proactivity could decrease the likelihood of litigation -- procedure in place in case of an attack -obtaining a cyber-insurance policy -- establishing beneficial private-public relationships. Subject: Fraud Subject: Internet SNIPER Bulletin – June 2014 Page 79 of 79 © Commonwealth of Australia 2014 Published by: IP Australia Discovery House, 47 Bowes Street, Phillip, ACT 2606 1300 65 10 10 www.ipaustralia.gov.au