SNIPER Bulletin - June 2014

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SNIPER Bulletin
Searchable Networked Intellectual
Property Electronic Resource
June 2014
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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
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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
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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
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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
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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
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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
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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
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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
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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
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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
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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
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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
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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
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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
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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
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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
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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
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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
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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
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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
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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
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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)
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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
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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
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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
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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
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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
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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
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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
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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
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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
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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
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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
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