SNIPER Bulletin
Searchable Networked Intellectual
Property Electronic Resource
February 2015
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ISSN: 2202-753X
SNIPER No.: 2014/02042
Author: Liu, Deming
Title: Academic performers' rights as an impediment to the progress of science: is the implied
licence a solution?
Source: European Intellectual Property Review. Vol. 36 No. 11, 2014, pp. 707-715.
Abstract: Implication of licences for performers' rights in the context of education -- recent US
case, Garcia v Google -- judge implied a licence for the performers' right -- review of UK cases -extent to which a licence for performers' rights can be implied to promote education in the UK -- UK
law should adopt the Australian approach and carve out an exception to performers' rights.
Subject: Neighbouring rights--case law--United Kingdom
Subject: Neighbouring rights--case law--United States
Subject: Neighbouring rights--law and legislation
Subject: Copyright licensing--education and training industry
SNIPER No.: 2014/02124
Author: Stern, Richard H.
Title: Alice v CLS Bank: US business method and software patents marching towards oblivion?
Source: European Intellectual Property Review. Vol. 36 No. 10, 2014, pp. 619-629.
Abstract: Alice Corp Pty Ltd v CLS Bank International -- patent-eligibility case -- patent invalid
because it broadly claimed an abstract idea -- Court's rationale for invalidating many or most
business-method patents -- computer-implemented claimed invention -- claimed invention in the
Alice case -- Federal Circuit's judgment in the Alice case -- recent Supreme Court case law -Supreme Court decision -- What the Supreme Court did and did not hold -- narrow, incremental
rulings as to software patent eligibility.
Subject: Business methods--patentability--United States
Subject: Patent validity--United States
Subject: Patentability--case law--United States
Subject: Computer-related inventions--patentability--United States
SNIPER No.: 2014/02184
Author: Nielsen, Jane
Author: Nicol, Dianne
Author: Liddicoat, John
Author: Whitton, Tess
Title: Another missed opportunity to reform compulsory licensing and Crown use in Australia
Source: Australian Intellectual Property Journal. Vol. 25 No. 2, December 2014, pp. 74-92.
SNIPER Bulletin – February 2015
Page 1 of 29
Abstract: Current status of the provisions in the Patents Act 1990 (Cth) relating to compulsory
licensing and Crown use -- Productivity Commission's 2013 inquiry into the compulsory licensing of
patents -- analysis of the resulting report -- provisions relating to use without authorisation contain
a number of deficiencies -- Productivity Commission was given the opportunity to rectify a number
of these issues -- its tentative approach to reform means that the prospect of significant clarification
has been passed up -- article urges that the ramifications of implementing the proposed tests be
carefully considered -- the proposed amendments are likely to exacerbate the problems inherent in
the current compulsory licensing provisions -- introduce a host of new issues that will require
resolution -- should be promoting clarity, certainty and simplicity
Subject: Compulsory licensing--Australia
SNIPER No.: 2014/02047
Author: Frolova, Kateryna
Title: Auteurswhat?: Dutch copyright law not tolerated by the CJEU: ACI Adam BV v Stichting de
Thuiskopie and Stichting Onderhandelingen Thuiskopie vergoeding (C-435/12)
Source: European Intellectual Property Review. Vol. 36 No. 11, 2014, pp. 738-743.
Abstract: Court of Justice of the European Union ruling -- private copying exception found in
art.5(2) of Directive 2001/292 is only applicable to copies made from lawful sources -- decision
primarily concerned the scope of art.5(2)(b) and the effect of the "three-step test" found in art. 5(5)
on that scope -- Dutch law -- European law -- impact of the decision -- decision has had
harmonising effect on Member State law, by narrowly interpreting the private copy exception in
art.5(2)(b).
Subject: Copyright levies--case law--Europe
Subject: Copyright infringement--law and legislation--Europe
SNIPER No.: 2014/02131
Author: Hoeren, Thomas
Title: Big data and the ownership in data: recent developments in Europe
Source: European Intellectual Property Review. Vol. 36 No. 12, 2014, pp. 751-754.
Abstract: Big data is a catch word -- used as a denominator for a variety of new data processing
services -- question of who the owner of data stored for instance in the data recorder of a car -property in data seems to contradict the traditional concepts of civil law -- civil law has attributed
property to tangible goods -- first courts in the United Kingdom and Germany have developed a
new intellectual property right to data -- new property right in data has nothing to do with data
protection or database rights.
Subject: Database rights
Subject: Property law
SNIPER No.: 2014/02068
Author: Denness, Jim
Title: The breadth of analog claims in the chemical and pharmaceutical area
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent
Agents. Vol. 43 No. 10, October 2014, pp. 554-557.
SNIPER Bulletin – February 2015
Page 2 of 29
Abstract: Patent claims -- no clear mechanism for determining balance -- over-broad claims
adversley affect competition -- over-narrow claims adversely affect competitive incentive for
invention -- tools used by the European Patent Office (EPO) for limiting claim scope -- clarity and
Article 84 of the European Patent Convention (EPC) -- sufficiency and Article 83 EPC -- inventive
step and Article 56 EPC
Subject: Patent claims--pharmaceutical industry—Europe
SNIPER No.: 2014/02120
Author: Dutkowski, Rebecca
Title: Business method patents: a new approach?
Source: Intellectual Property Forum. No. 99, December 2014, pp. 63-69.
Abstract: Increase in difficulty in obtaining business method patents in recent years -- ad hoc
application of the law by the courts and IP Australia -- a look at how some other countries
approach the issue -- business method patents - a new approach? -- what is a business method
patent? -- the current approach in Australia in relation to business methods -- a narrow approach Europe -- a moderate approach -- Japan -- a broad approach -- United States -- a more local
approach -- New Zealand -- Australia's requirements under TRIPs -- what should be Australia's
approach to business method patents?
Subject: Business methods--patentability--Australia
SNIPER No.: 2014/02079
Author: Poulsen, Anders Michael
Title: Challenges with 3D marks
Source: World Trademark Review. No. 51, October-November 2014, pp. 58-60.
Abstract: European Court of Justice (ECJ) is toughening the registration requirements for shape
marks -- given the ongoing protection of trade mark registration it makes sense that applicants
would try and gain such protection -- Article 7 of the EU Community Trademark Regulation
(207/2009) -- distinctiveness in 3D trade marks -- General Court refused to register Lindt's 3D
chocolate bunnies -- Nestlé's registration for the 3D shape of a Kit Kat -- applicants cannot register
trade marks for shapes which are necessary to obtain a technical result -- LEGO case -- shape and
the value of a product -- Bang & Olufsen's application for a 3D trade mark for its speaker -- shape
marks as a badge of origin -- interaction of the absolute grounds for refusal -- goal of the strict
interpretation is that only actual trade marks will enjoy protection.
Subject: Shape marks--Europe
Subject: Shape marks--registrability—Europe
SNIPER No.: 2014/02067
Author: Poore, Alasdair
Title: A claim too far: should the breadth of claims have a higher profile
SNIPER Bulletin – February 2015
Page 3 of 29
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent
Agents. Vol. 43 No. 10, October 2014, pp. 553-554.
Abstract: Scope of a claim is central to a patent attorney's skills in terms of drafting and in
advising on infringement (and validity) -- point of view that broader claims are better -- this gets in
the way of competition -- broadest claim that a person can get past the patent office is not
necessarily regarded any longer as good practice -- stronger claims may be better -- need robustly
supportable balance between breadth and strength -- fundamentals for obtaining patent protection:
novelty, inventiveness and industrial application -- importance of sufficiency in patent claims -need for robust patent protection in wide range of jurisdictions -- application internationally of the
"support' or "insufficiency" test important to applicants
Subject: Patent claims
SNIPER No.: 2014/02075
Author: Office for Harmonization in the Internal Market (Trade Marks and Designs)
Title: The Convergence Programme in focus
Source: World Trademark Review. No. 51, October-November 2014, pp. 38-40.
Abstract: Convergence Programme aims to harmonise practices within the European Trademark
and Design Network by linking OHIM with national offices and user associations -- currently seven
different convergence programme projects -- first two projects focus on classification of goods and
services (CP1 and CP2) -- third project is looking at how figurative elements make a trade mark
distinctive (CP3) -- CP4 involves the handling of black-and-white or greyscale marks compared to
colour versions of the same mark -- CP5 examines relative grounds and likelihood of confusion -CP6 aims to define common guidelines for the graphical representation of designs -- CP7 aims to
produce a harmonised product indications database -- growth of the programme since 2011.
Subject: Trade marks--harmonisation--Europe
Subject: Industrial designs--harmonisation--Europe
Subject: Trade mark classification
Subject: Trade mark distinctiveness
Subject: Industrial design registrability
Subject: Industrial design classification
SNIPER No.: 2014/02043
Author: Derclaye, Estelle, 1974Title: The Court of Justice copyright case law: Quo Vadis?
Source: European Intellectual Property Review. Vol. 36 No. 11, 2014, pp. 716-723.
Abstract: Court of Justice of the European Union (CJEU) -- CJEU's copyright case law has had an
impact on the copyright laws of UK and many Member States -- article analyses the literature's
criticisms of the Court's copyright case law -- analysis shows that not all criticisms are justified -Court's future case law -- the onus is on the court to use its interpretation methods more
consistently.
Subject: Court of Justice of the European Union
Subject: Copyright--law and legislation--Europe
SNIPER Bulletin – February 2015
Page 4 of 29
SNIPER No.: 2014/02122
Author: Friedgut, Martin
Author: Caldwell, Amanda
Author: Heerey, Peter
Author: Cordiner, Tom
Author: Nash, Alan
Author: Reynolds, Simon
Title: Current developments: Australia
Source: Intellectual Property Forum. No. 99, December 2014, pp. 72-83.
Abstract: IP Australia discontinuing forwarding copies of irregularity notices -- patent
correspondence marked as confidential -- Design number formats amended -- updates to the
Trade Marks Office Manual of Practice and Procedure -- Miles v Commissioner of Patents -lapsed application -- Task Technology Pty Ltd v Commissioner of Taxation -- royalties for computer
programs -- Vasco Investment Managers Ltd v Stanley Australia Ltd -- confidential information -- B
Braun Melsungen AG v Multigate Medical Devices Pty Ltd -- patent infringement -- WarnerLambert Company LLC v Apotex Pty Ltd -- appealing primary Judge's refusal to grant an injunction
-- D'Arcy v Myriad Genetics Inc -- whether claims regarding isolated nucleic acid are a manner of
manufacture
Subject: Trade secrets--case law--Australia
Subject: Patent infringement--case law--Australia
Subject: Patents--case law--Australia
SNIPER No.: 2014/02132
Author: Synodinou, Tatiana-Eleni
Title: Database sui generis right and meta search engines: what's new and what's next?
Source: European Intellectual Property Review. Vol. 36 No. 12, 2014, pp. 755-761.
Abstract: Background and history of the protection of databases -- sui generis right -- CJEU's
judgment in the Innoweb v Wegener case -- complex aspect of the application of the sui generis
right -- infringement of the database sui generis right by dedicated meta search engines -- ruling
reveals the potential of the database maker's right to regulate the information market -- hybrid
nature of this right -- origins lie in unfair competition law, but has taken the form of a new
intellectual property right.
Subject: Database rights--case law--Europe
Subject: Carriage service providers
SNIPER No.: 2014/02146
Author: Allan, Andrea
Title: Demands and unjustified threats: practical tips for lawyers
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 10, December 2014, pp. 274277.
SNIPER Bulletin – February 2015
Page 5 of 29
Abstract: Always necessary to assess if the recipient of cease and desist letters understands it is
a threat of infringement proceedings -- consider infringement, defences and validity issues -investigate and resolve ownership issues -- registered designs and innovation patents must be
certified -- case management principles -- loss of privilege -- demands to companies -- breadth of
demands -- trap purchases -- unjustified threats review -- defences -- what is a threat -- counterclaims for infringement -- revocation claims
Subject: Intellectual property abuse--Australia
Subject: Intellectual property infringement--Australia
SNIPER No.: 2014/02154
Author: Webb, Timothy
Author: Landerer, Nicole
Title: Descriptive words, trade marks and use on the internet: how far can protection extend?
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 10, December 2014, pp. 307312.
Abstract: Tension between descriptive and distinctive signs in the context of use as domain
names, search engine keywords and on websites -- practical tips -- avoid choosing marks
containing highly descriptive words -- settled principles in the offline cases -- emerging principles in
the online arena -- domain names as trade marks -- keywords
Subject: Trade mark distinctiveness--Australia
Subject: Domain names--Australia
Subject: Keyword advertising--Australia
SNIPER No.: 2014/02085
Author: Werner, José Henrique Vasi
Author: Andrade, Gustavo Piva de
Title: Doing battle on and off the pitch: a review of IP disputes in Brazil during the FIFA World Cup
and the lessons learnt
Source: World Trademark Review. No. 51, October-November 2014, pp. 86-89.
Abstract: Intellectual Property (IP) disputes in Brazil during the Fédération Internationale de
Football Association (FIFA) World Cup and an analysis of lessons learnt -- importance of
intellectual property, marketing rights and sponsorship deals around the tournament -- FIFA as the
world governing body has official partners and sponsors -- Brazilian Football Confederation (CBF)
owns the IP and marketing rights associated with the Brazilian football team -- non-sponsoring
companies who try to associate their products and trademarks with FIFA and/or CBF -- specific
legislation regulating intellectual property and marketing rights around the tournament are a
condition of hosting the event -- General World Cup Act -- ambush marketing defined -- SportsRelated Issues Act -- enforcement of rights and the build-up of ambush marketing case law -border enforcement -- police raids to seize illegal products on the market -- success for FIFA, CBF
and sponsors provides a useful example for other nations hosting sporting events.
Subject: Ambush marketing--law and legislation--Brazil
Subject: Ambush marketing--tourism and recreation industry--Brazil
Subject: Major sporting events--law and legislation--Brazil
SNIPER Bulletin – February 2015
Page 6 of 29
SNIPER No.: 2014/02121
Author: Jacob, Robin
Title: Don't attack patent law, but improve it
Source: Intellectual Property Forum. No. 99, December 2014, pp. 70-71.
Abstract: Clear overall evidence that, rather than braking it, the patent system drives innovation -no evidence or credible observation to support the hypothesis that patent rights, intended to
stimulate innovation, actually threaten it -- observation of the real commercial world -- innovative
companies fund their research with the profits from other successful research efforts -- considering
the history of patent abolitionism -- the reality of evidence from companies whose business
depends on innovation is ignored -- "patent law provides limited protection for patents developing
new uses of old and known medicines" -- attention should be moved away from attacking the
principle behind patent law to concentrate on improving its machinery
Subject: Innovation (Technological)
Subject: Patents--law and legislation
SNIPER No.: 2014/02088
Author: Li, Celia Y
Author: Li, Alice
Title: The electronic trademark
Source: World Trademark Review. No. 51, October-November 2014, pp. 96-97.
Abstract: Considerable portion of Chinese Intellectual Property (IP) infringement cases are of an
online nature -- domain name-related issues growing -- laws and regulations in China governing
domain name registration, infringement and dispute resolution -- China Internet Network
Information Centre (CNNIC) -- domain name registration -- first to file principle for domain name
registration in China -- domain name dispute resolution -- GE v Jiangdong DaGang Fenghu
Electronics Shop -- domain name infringement suits -- Dupont v Beijing Guowang Information Co,
Ltd -- Yue Tongyu v Zhou Libo -- domain name infringement can be more harmful than trade mark
infringement.
Subject: Domain name registration--case law--China
Subject: Domain name dispute resolution--case law--China
Subject: Intellectual property litigation--China
SNIPER No.: 2014/02076
Author: Office for Harmonization in the Internal Market (Trade Marks and Designs)
Title: The Enforcement Database: an overview
Source: World Trademark Review. No. 51, October-November 2014, pp. 41-42.
Abstract: The Enforcement Database (EDB) project of the EU Observatory on Infringements of
Intellectual Property Rights -- department within OHIM -- EDB allows businesses to exchange
information with enforcement officials via a secure medium -- tracking counterfeit products -- EDB
connects to several IP databases -- uploaded data can be accessed across the European Union by
enforcement officials -- EDB will be connected to further networks next year.
Subject: Intellectual property enforcement--Europe
Subject: Counterfeiting
SNIPER Bulletin – February 2015
Page 7 of 29
SNIPER No.: 2014/02129
Author: Stone, David
Author: Corbett, William
Title: English design litigation: what role for expert evidence?
Source: European Intellectual Property Review. Vol. 36 No. 10, 2014, pp. 675-679.
Abstract: Recent Intellectual Property Enterprise Court (IPEC) case -- designs for beer glasses -evidence parties adduce in proceedings -- High Court cases from 1999 -- subsequent Court of
Appeal cases -- framework for expert evidence in English design cases -- expert evidence play an
important part in English design litigation -- procedural issues.
Subject: Industrial design litigation
Subject: Evidence--case law--United Kingdom
SNIPER No.: 2014/02080
Author: Beser, Fernanda
Title: The first years of Brazil's SACI-Adm
Source: World Trademark Review. No. 51, October-November 2014, pp. 62-63.
Abstract: Increasing use of SACI-Adm, the administrative proceeding for the resolution of conflicts
involving '.br' domain names -- launched in October 2010 by Brazilian domain name registry Nic.br
-- innovations introduced by SACI-Adm -- comparison with the Uniform Domain Name Dispute
Resolution Policy (UDRP) -- quick and efficient solution to IP infringements -- suggested
improvements.
Subject: Domain name dispute resolution--Brazil
Subject: Domain names--Brazil
SNIPER No.: 2014/02074
Author: Little, Trevor
Title: From fees to the future
Source: World Trademark Review. No. 51, October-November 2014, pp. 18-36.
Abstract: Office for Harmonisation in the Internal Market (OHIM) focus -- proposals to amend the
fees regime -- one class per fee proposal received a positive response in the survey -- renewal fee
proposals received a mixed review -- OHIM's proposal to extend fast track options available to
registered Community designs (RCDs) to CTMs -- according to the survey there is some demand
for such a fast track option but support would depend on the details of the proposal -- use of blackand-white (B&W) or greyscale marks compared with coloured versions of the same sign -- survey
results mixed on this issue -- European Union (EU) Observatory on Infringements of Intellectual
Property Rights -- a look at two key studies released by OHIM in the past year -- rating OHIM's
performance -- OHIM's online trade mark search tool TMview and other online tools -- OHIM
mediation service -- IP Mediation Conference in Alicante -- use of the Enforcement Database -new service charter -- legislative package yet to pass -- much work remains to be done at OHIM.
Subject: Trade marks--statistics--Europe
Subject: Trade marks--reform--Europe
Subject: Trade marks--law and legislation--Europe
SNIPER Bulletin – February 2015
Page 8 of 29
SNIPER No.: 2014/02150
Author: Lee, John
Author: Thompson, Edward
Title: The Full Court clarifies the starting point for inventive step
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 10, December 2014, pp. 292295.
Abstract: AstraZeneca AB v Apotex Pty Ltd -- patents relating to the drug, CRESTOR owned by
AstraZeneca -- Full Federal Court of Australia upheld decision that the patents are invalid -- the
"starting point" for inventive step -- entitlement and the Raising the Bar amendments -amendments narrowing the scope of the claims can result in a deferred priority date -impermissible use of CGK for novelty -- contributory infringement under s 117 of the Patents Act
(Cth) 1990 in cases of tablet splitting
Subject: Inventive step--Australia
Subject: Patents--case law--Australia
SNIPER No.: 2014/02069
Author: Iqbal, Zarina
Title: Grasping too much?: challenges with pharmaceutical and biotechnology patents for "analog
compounds"
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent
Agents. Vol. 43 No. 10, October 2014, pp. 557-561.
Abstract: Pharmaceutical and biotech patents -- challenges relating to what is the right scope -scope justified by the inventive contribution -- approaches applied by courts evaluating the right
scope -- case law in the US and EPO -- some countries such as Pakistan retain a statutory
framework on sufficiency and "fair basis"
Subject: Patent claims
SNIPER No.: 2014/02046
Author: Jones, Joseph
Title: "Have a break ... have a CJEU Kit Kat reference": clarification sought in what circumstances
the shape of a product can be registered as a trade mark: Socié*té des Produits Nestlé SA v
Cadbury UK Ltd
Source: European Intellectual Property Review. Vol. 36 No. 11, 2014, pp. 733-738.
Abstract: Registration of a three-dimensional chocolate product as a trade mark -- questions
referred to Court of Justice of the European Union (CJEU) -- clarification sought on issues
concerning the assessment of acquired distinctive character -- absolute grounds of refusal applying
to shapes which result from the nature of the goods or have a technical effect -- judgment also
clarifies the correct approach to take to inherent distinctive character -- analysis of UK and
European case law on shape trade marks.
Subject: Shape marks--case law--Europe
Subject: Trade mark distinctiveness
Subject: Trade mark registrability--law and legislation--Europe
SNIPER Bulletin – February 2015
Page 9 of 29
SNIPER No.: 2014/02151
Author: Chalmers, Charmaine
Title: Help your clients fund their intellectual property developments
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 10, December 2014, p. 296.
Abstract: Australian government program known as the R&D Tax Incentive -- encourages
companies to "undertake experimental activities for gaining new knowledge" -- 1.7 billion dollars of
funding per year provided -- if a company is undertaking initiatives to improve processes or
products, elements of such projects may qualify -- funding provided through an offset -- results do
not need to be patentable to qualify
Subject: Research and development--Australia
SNIPER No.: 2015/00011
Author: Mahalatchimy, Aurélie
Author: Rial-Sebbag, Emmanuelle
Author: Duguet, Anne-Marie
Author: Taboulet, Florence
Author: Cambon-Thomsen, Anne
Title: The impact of European embryonic stem cell patent decisions on research strategies
Source: Nature Biotechnology. Vol. 33 No. 1, January 2015, pp. 41-43.
Abstract: Patentability of inventions on human embryonic stem cells (hESCs) -- restricted by the
European Patent Office (EPO) and the Court of Justice of the European Union (CJEU) -- provide
for uniform exclusion of patents on hESCs obtained through destruction of human embryos -decisions in WARF, Brüstle v. Greenpeace and Technion cases -- impact on hESC research
pathways -- most hESC lines currently available cannot be used to obtain patents in Europe -need to use hESC lines derived without destruction of human embryos, or iPSC lines -- reorganize
R&D research strategies.
Subject: Patenting of life forms--Europe
Subject: Research on life forms--Europe
SNIPER No.: 2014/02082
Author: Enriquez, E. Martín
Title: Implications of US sanctions for rights holders
Source: World Trademark Review. No. 51, October-November 2014, pp. 68-73.
Abstract: Overview of US economic sanctions on IP rights in targeted countries and the Arab
League boycott of Israel and its effect on IP rights -- US Department of the Treasury's Office of
Foreign Assets Control (OFAC) manages US sanction programmes -- US government doesn't
allow cooperation with unapproved boycotts such as the Arab League boycott of Israel -- activities
allowed by rights holders in sanctioned or embargoed countries -- licences granted by OFAC to
allow activities in sanctioned or embargoed countries -- US sanctioned countries -- Arab League
boycott of Israel -- changes are often quick so it is important to review OFAC and Department of
Commerce and Department of the Treasury regulations.
Subject: Intellectual property rights
Subject: Economic policy--United States
Subject: Trade
SNIPER Bulletin – February 2015
Page 10 of 29
SNIPER No.: 2014/02115
Author: Phillips, Dougal
Title: In conversation with Kenneth Raphael
Source: Intellectual Property Forum. No. 99, December 2014, pp. 6-12.
Abstract: The legal career of the Federal Circuit Court Judge -- began as a solicitor in London in
the 1960s -- ran the case of Antocks Lairn Limited v I. Bloohn Limited regarding preservation of
original design work and its right to protection -- relocated to Australia in the 1970s -- involved with
copyright and design protection work at Holman Webb in Sydney -- was asked to join the new
Federal Magistrate's Court in 2000 -- has set down principles in Australian copyright law
Subject: Raphael, Kenneth--interviews
Subject: Lawyers
Subject: Copyright
SNIPER No.: 2014/02040
Author: Neuberger, David Edmond, 1948Title: Intellectual property in the United Kingdom and Europe
Source: European Intellectual Property Review. Vol. 36 No. 11, 2014, pp. 693-699.
Abstract: Burrell Lecture for the Competition Law Association -- tensions that exist between the
United Kingdom and the rest of Europe on IP issues -- IP issues and competition law -- patent and
trade mark law involving European issues -- United Kingdom and price-fixing.
Subject: Intellectual property law--Europe
Subject: Intellectual property law--united Kingdom
Subject: Competition law
SNIPER No.: 2014/02070
Author: Poore, Alasdair
Title: Intellectual property insurance: deterrent or distraction
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent
Agents. Vol. 43 No. 10, October 2014, pp. 564-566.
Abstract: Changing climate in intellectual property insurance -- 'before the event' (BTE) insurance
for IP disputes -- beneficial for small businesses -- answers to frequently asked IP insurance
questions
Subject: Insurance--intellectual property industry
SNIPER No.: 2014/02039
Author: Brabin, Charles
Title: Intellectual property law in the realm of biology: striking the right balance
Source: European Intellectual Property Review. Vol. 36 No. 11, 2014, pp. 687-692.
SNIPER Bulletin – February 2015
Page 11 of 29
Abstract: Unprecedented progress in the fields of genetics, stem cell biology and biotechnology -need to protect the fundamental aims of the patent system -- need to prevent elements and
processes of the natural world from becoming commodities -- avoid restricting publicly accessible
knowledge -- hindering research through the excessive enforcement of property rights -- three
areas of recent contention and change -- gene patents -- patents involving stem cells and human
embryos -- patents relating to "essential biological processes" -- breeding plants in the
biotechnology area -- current state of European and US law in this field.
Subject: Biotechnology--patentability
Subject: Research on life forms
Subject: Gene patents
Subject: Biotechnology--law and legislation--Europe
Subject: Biotechnology--law and legislation--United States
SNIPER No.: 2014/02118
Author: Burley, Stephen C. G.
Title: Is Lockwood v Doric No 1 dead or does it just look that way?: a review of the new
requirements for textual disclosure under the Australian Patents Act
Source: Intellectual Property Forum. No. 99, December 2014, pp. 36-49.
Abstract: New legislation has posed tests to replace the old law of insufficiency and fair basis for
Australian and New Zealand patents -- the old law of sufficiency and fair basis -- the new law of
sufficiency and "support" -- overview of the European and United Kingdom position -- the position
in Australia
Subject: Patent claims--Australia
Subject: Patent disclosure--Australia
Subject: Patents--law and legislation—Australia
SNIPER No.: 2014/02045
Author: Stothers, Christopher
Author: Kerckhove, Marleen Van
Title: Is winter coming?: the competition chill continues in Italian Antitrust Authority v Pfizer
(Xalatan)
Source: European Intellectual Property Review. Vol. 36 No. 11, 2014, pp. 729-732.
Abstract: Italian antitrust authority (IAA) -- Pfizer obtaining a supplementary protection certificate
in Italy on a valid divisional patent for latanoprost -- Italian Consiglio di Stato decision -- decision
raises important and difficult questions on the enforcement practices of certain antitrust authorities
in Europe -- Pfizer's patents -- supplementary protection certificates (SPEs) -- IAA's decision.
Subject: Patent extension--pharmaceutical industry--Italy
Subject: Divisional applications (Patents)--pharmaceutical industry--Italy
Subject: Patent extension--case law--Italy
SNIPER Bulletin – February 2015
Page 12 of 29
SNIPER No.: 2014/02148
Author: Logan, Catherine
Title: Isolated genetic material: invention or land grab? The D'Arcy v Myriad Genetics case
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 10, December 2014, pp. 284288.
Abstract: Full Federal Court upheld decision by lower court in the BRCA 1 and 2 gene patent
cases -- debate about whether the Patents Act 1990 need amending -- how we got here,
biotechnically speaking -- the Australian story to date -- why the US position is so different -- why
the Full Federal Court decision is unlikely to be overturned -- why the Full Federal Court decision is
of limited application -- why the Patents Act is unlikely to be amended as a result of this decision or
others like it.
Subject: Gene patents--Australia
Subject: Gene patents--United States
Subject: Patenting of life forms
SNIPER No.: 2014/02048
Author: Sobol, Agata
Title: Italy and the choice of venue in online infringment cases: Pewag Austria GmbH and Pewat
Italia Srl v Walmec SpA and Weissenfels Traction Srl in liquidazione
Source: European Intellectual Property Review. Vol. 36 No. 11, 2014, pp. 743-746.
Abstract: Pewag Austria GmbH and Pewat Italia Srl v Walmec SpA and Weissenfels Traction Srl
in liquidazione -- Court of Turin judgment -- changed the well-established case law on the choice of
venue for online infringement cases -- Tribunali delle imprese -- plaintiff can sue the defendant in
any Italian court since the online infringement is committed anywhere in Italy -- Court of Turin has
reversed this opinion and raised doubts about its correctness in the light of general principles of
Italian law.
Subject: Patent infringement--case law--Italy
Subject: Patent litigation--law and legislation--Italy
Subject: Legal jurisdiction--Italy
SNIPER No.: 2014/02086
Author: Remtulla, Tariq
Title: It's officially time for a change to Canada's official marks regime
Source: World Trademark Review. No. 51, October-November 2014, pp. 90-91.
Abstract: Canada -- Bill C-611, An Act to Amend the Trademarks Act introduced June 2014 -official marks are unique to Canadian trade mark law -- allows public authorities to obtain special
protection -- protected under Subparagraph 9(1)(n)(iii) of the Canadian Trademarks Act -- power of
official marks -- not subject to the restrictions regular trade mark applications are -- official marks
are often described as "invulnerable" -- proposed amendments -- other recent legislative activity in
the area of trade marks -- public authorities have a considerable advantage over competitors
commercially -- Canadian Parliament's Standing Committee on Industry, Science and Technology
recommendation to restrict the scope of official marks -- agreement among most trade mark
practitioners in Canada that reform is required.
SNIPER Bulletin – February 2015
Page 13 of 29
Subject: Official marks--Canada
Subject: Official marks--law and legislation--Canada
Subject: Trade marks--Canada
SNIPER No.: 2014/02041
Author: Graham, Christine
Author: Morton, Jeremy
Title: Latest EU developments in standards, patents and FRAND licensing
Source: European Intellectual Property Review. Vol. 36 No. 11, 2014, pp. 700-706.
Abstract: Standard-essential patents (SEPs) -- standard setting organisation (SSO) -- standards
and EU competition law -- EU competition law principles -- two decisions published by the
European Commission concerning SEP enforcement -- Motorola Mobility and Samsung -- current
approaches to injunctive relief -- role of SSOs -- role of the courts in setting FRAND royalty rate.
Subject: Standards (Technical)
Subject: Injunctions--Europe
Subject: Patent licensing--Europe
SNIPER No.: 2014/02126
Author: Ribeiro de Almeida, Alberto Francisco
Title: The legal nature of geographical indications and designations of origin
Source: European Intellectual Property Review. Vol. 36 No. 10, 2014, pp. 640-652.
Abstract: Geographical indications and designations of origin -- special legal nature -- definition
and level of protection -- qualification of designations of origin and geographical indications as
intellectual property rights -- no single system to protect -- problems with several models of
protection -- German type of common property -- communal right -- rights holders of the
designation of origin or geographical indication -- distinction between the right holders and the
person in whose name the registration is conceded -- ownership of the right and exercise of the
right -- schemes of certification applied to products and services -- trade marks -- collective marks - certification marks.
Subject: Geographical indicators--law and legislation--Europe
Subject: Trade marks
SNIPER No.: 2014/02125
Author: Hart, Michael
Title: The legality of internet browsing in the digital age
Source: European Intellectual Property Review. Vol. 36 No. 10, 2014, pp. 630-639.
Abstract: Public Relations Consultants Association Ltd v Newspaper Licensing Agency Ltd -Court of Justice of the European Union (CJEU) ruling -- on-screen and cache copies made
automatically when end-users read online newspaper reports fall within the art. 5 (1) temporary
copying exception in Directive 2001129/EC -- consumers do not infringe copyright when reading or
browsing of copyrighted protected works online -- analysis of the genesis, reasoning and
implications of this important copyright decision.
SNIPER Bulletin – February 2015
Page 14 of 29
Subject: Copyright infringement--case law--Europe
Subject: Fair use (Copyright)--law and legislation--Europe
Subject: Copyright owners' rights--Europe
SNIPER No.: 2014/02185
Author: Kwong, Jennifer
Title: The limitations of the Australian resale royalty scheme and its implications for artists
Source: Australian Intellectual Property Journal. Vol. 25 No. 2, December 2014, pp. 93-106.
Abstract: Resale Royalty Right for Visual Artists Act 2009 (Cth) created a resale royalty right in
Australia -- recognised the right of artists to an ongoing economic interest in their art -- established
a scheme to collect and distribute royalties -- analysis of the extent to which the current operation
of the scheme provides an additional source of income to artists through royalties derived from
resales – conclusions that limitations inherent in the Act restrict the scope of eligible artists and the
efficiency with which artists can rely on resale royalties as a source of income.
Subject: Droit de suite--Australia
Subject: Artistic works--Australia
SNIPER No.: 2014/02071
Author: Boff, Jim
Title: Money and politics: the Unified Patent System
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent
Agents. Vol. 43 No. 10, October 2014, p. 567.
Abstract: Fees that will apply in relation to the Unitary patent and the Unified Patent Court -factors to be taken into account in setting the fees are set out in the Agreement on a Unified Patent
Court, and the Regulation on Unitary Patent Protection -- vaguely expressed -- will need political
compromise -- if the Court cannot balance its budget from its own resources, Contracting Member
States must remit to it special financial contributions -- amount difficult to calculate
Subject: Unified Patent Court
Subject: Regional patents--costs--Europe
Subject: Patent systems--Europe
Subject: Patent litigation--costs--Europe
SNIPER No.: 2014/02117
Author: Gregg, Claire
Title: The Myriad dichotomy: a tale of two jurisdictions
Source: Intellectual Property Forum. No. 99, December 2014, pp. 21-35.
Abstract: Australian Federal Court ruled that isolated DNA and RNA are patentable under s.
18(1)a of the Patents Act 1990 in Cancer Voices Australia v Myriad Genetics Inc -- US Supreme
Court determined in the case of Association for Molecular Pathology v Myriad Genetics Inc "the
same genetic material is not patentable under 35 USC s. 101 of the US Patents Act" -- what is
BRCA? -- who is Myriad? -- why the big fuss? -- the United States -- products of nature -- Australia
-- manner of manufacture -- impacts on the future of gene patenting -- cDNA and method claims
applying knowledge about genes are capable of defining patentable subject matter.
SNIPER Bulletin – February 2015
Page 15 of 29
Subject: Gene patents--Australia
Subject: Gene patents--United States
Subject: Patenting of life forms
SNIPER No.: 2014/02087
Author: Costin, Sharyn
Title: Navigating the Canadian domain name landscape
Source: World Trademark Review. No. 51, October-November 2014, pp. 94-95.
Abstract: Recommendation that non-Canadian entities operating in or planning to enter the
Canadian market obtain a '.ca' domain name -- delay can be costly and harmful -- Canadian
Internet Registration Authority (CIRA) has strict rules on owning a '.ca' domain -- Canadian
Presence Requirements (CPRs) -- non-Canadian entities can take advantage of the Canadian
Internet Registration Authority's Dispute Resolution Policy (CDRP) in contesting a domain name of
interest -- Google, Inc v Glynis Fraser -- Asos Canada Services Ltd v Nexon Media Inc -- Ebates
Canada Inc v Cranhill -- establishing prior rights -- Guitar Center, Inc v Pipemi -- ownership of
domain names -- rules prohibiting the use of proxy registration -- Mapquest, Inc v The Lodging
Company Reservations Ltd -- Mold.ca Inc v Moldservices.ca Inc -- implications of expected
amendments to Canada's Trademarks Act.
Subject: Domain name registration--case law--Canada
Subject: Domain name dispute resolution--case law--Canada
SNIPER No.: 2014/02084
Author: Harper, David
Author: Armstrong, Rachel
Title: New GCC trademark law sparks change across the region
Source: World Trademark Review. No. 51, October-November 2014, pp. 81-85.
Abstract: Revised draft of the Gulf Cooperation Council States (GCC) Trademark Law approved
by the Cabinet of Ministers in Saudi Arabia -- as of yet only Bahrain and Saudi Arabia have begun
to enact the law -- law will produce a unified trade mark system for the six GCC states of Bahrain,
Kuwait, Qatar, Oman, Saudi Arabia and the United Arab Emirates -- one set of rules for much of
the trade mark application process but in practice there will still be differences in its implementation
and interpretation in each state -- a look at one change to the status quo in each state if the
Trademark Law is enacted -- Bahrain and Oman and the Madrid Protocol -- Kuwait and priority
claims -- Saudi Arabia and opposition procedures -- United Arab Emirates and enforcement
provisions -- Qatar and classification of goods and services -- one unified trade mark law is
welcome but unintended consequences are likely and will need to be addressed.
Subject: Trade marks--law and legislation--Arab States of the Gulf
Subject: Trade mark systems--harmonisation--Arab States of the Gulf
SNIPER No.: 2014/02128
Author: Hernandez-Marti Perez, Cristina
Title: The possibility of IP protection for smell
Source: European Intellectual Property Review. Vol. 36 No. 10, 2014, pp. 665-674.
SNIPER Bulletin – February 2015
Page 16 of 29
Abstract: How smells are currently protected by intellectual property rights in the European Union
(EU) and how this protection might evolve -- smell trade marks under the Community Trademark
Regulation (CTMR) -- graphical representation of smell trade marks -- Sieckmann case -- methods
of recording smells -- functionality concerns and distinctive character -- registered smell marks in
the United Kingdom -- registrability of scent mark under European trade mark law -- alternative way
to protect smells -- smell protected under copyright, patents or trade secrets.
Subject: Non-traditional marks--registrability--Europe
Subject: Trade marks--law and legislation--Europe
SNIPER No.: 2014/02114
Author: Sexton, Christopher
Title: A possible overhaul of competition regulation and its impact on intellectual property laws in
Australia
Source: Intellectual Property Forum. No. 99, December 2014, pp. 2-5.
Abstract: Draft report released by Harper Competition Policy Review Panel in September -recommended abolishing remaining restrictions on parallel importation and an overarching review
of IP be undertaken by an independent body such as the Productivity Commission -- review should
focus on competition policy issues arising from new technology developments and markets -section 51 (3) of the Competition and Consumer Act 2010 should be repealed -- a final report to
the Federal Government by the Panel is anticipated in March 2015
Subject: Intellectual property--reviews
Subject: Competition (Economics)
SNIPER No.: 2014/02127
Author: Li, Jingyi
Author: Selvadurai, Niloufer
Title: Reconciling the enforcement of copyright with the upholding of human rights: a
consideration of the Marrakesh Treaty to facilitate access to published works for the blind, visually
impaired and print disabled
Source: European Intellectual Property Review. Vol. 36 No. 10, 2014, pp. 653-664.
Abstract: Harmonise the enforcement of proprietary intellectual property rights with the upholding
of fundamental human rights -- newly adopted Marrakesh Treaty to Facilitate Access to Published
Works for Persons Who Are Blind, Visually Impaired and Print Disabled (Marrakesh Treaty) seeks
to provide a governance framework that effectively and equitably balances the rights of people
who are blind, visually impaired, or otherwise print disabled to access copyright material with the
protection of the rights of copyright proprietors -- relationship between intellectual property rights
and human rights -- international treaties addressing both rights -- nature and ambit of the
Marrakesh Treaty -- merits of the Treaty.
Subject: Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind,
Visually Impaired, or Otherwise Print Disabled (2013 June 28)
Subject: Fair use (Copyright)
Subject: Copyright--treaties
SNIPER Bulletin – February 2015
Page 17 of 29
SNIPER No.: 2014/02119
Author: Dayal, Sumer
Title: Redefining patentability: the impact of Novartis v Union of India on TRIPs, trade and the
balance of power between developed and developing nations
Source: Intellectual Property Forum. No. 99, December 2014, pp. 50-62.
Abstract: Power under the international IP regime stems from geopolitical factors -- Agreement on
Trade Related Aspects of Intellectual Property Rights (TRIPs) -- background on India's intellectual
property regime -- reasoning behind the Novartis AG v Union of India decision and the impact both
domestically and internationally -- factors justifying India's patent strategy and how Novartis
solidifies a change to trade relations -- recommendations on how industrialised nations should
approach the growing influence of developing ones -- the Indian context -- Novartis -- patent
application for a new form of the anti-cancer drug, Gleevec was rejected when unable to
demonstrate "significantly enhanced efficacy" -- Novartis with geopolitics -- cooperation over
adversalism
Subject: Patents--Pharmaceutical industry--India
Subject: Pharmaceuticals--case law--India
Subject: Intellectual property law--India
SNIPER No.: 2014/02144
Added author: IP Australia
Title: Regulation changes proposed to implement trans-Tasman initiatives: consultation paper
[electronic resource]
Source: Regulation Changes Proposed to Implement Trans-Tasman Initiatives: Consultation
Paper. December 2014.
Abstract: Proposals for amendment of the Australian regulations to implement the trans-Tasman
patent attorney regime in Australia set out in part A of the paper -- trans-Tasman initiatives in the
Intellectual Property Laws Amendment Bill 2014 -- part B of the paper -- overview of what changes
may be required to the Patents Regulations 1991 (Cth) to implement the proposed single patent
application process ("SAP') and the proposed single patent examination process ('SEP') for
Australia and New Zealand -- seeking comment on whether there would be any issues associated
with the regulatory proposals outlined and how any issues might be addresses -- submissions
close 15 February 2015.
Subject: Australia. Intellectual Property Laws Amendment Bill 2014
Subject: Patents--law and legislation--Australia
Subject: Patent attorneys--Australia
SNIPER No.: 2014/02081
Author: Pierce, Justin
Author: Pratt, Andrew
Author: Price, Andrew
Title: The results are in on the ITC
Source: World Trademark Review. No. 51, October-November 2014, pp. 64-66.
SNIPER Bulletin – February 2015
Page 18 of 29
Abstract: Not enough use is being made of the US International Trade Commission (ITC) by
brand owners -- ITC can direct US Customs and Border Protection (CBP) to prevent counterfeit
products from entering the United States -- ITC administers Section 337 of the US Code -- proving
violation of Section 337 is uncomplicated particularly for statutory intellectual property is at issue -requirements to prove infringement -- two types of remedial orders are offered by the ITC -exclusion orders and cease and desist orders -- advantages the ITC offers to companies over
federal district court litigation -- companies which have successfully used the ITC's remedies and
swift procedures -- Crocs footwear -- Phillip Morris cigarettes -- Louis Vuitton luggage and bags -use of the ITC should be an important part of protecting a company's brand.
Subject: Intellectual property enforcement--United States
Subject: Brand management--United States
Subject: Counterfeiting
SNIPER No.: 2014/02044
Author: Zhang, Jin
Author: Wu, Lijuan
Title: Review of the key aspects of the third amendment of the Trademark Law of the PRC
Source: European Intellectual Property Review. Vol. 36 No. 11, 2014, pp. 724-728.
Abstract: New Trademark Law of China -- significant milestone in the development of the
legislation of trade mark law in China -- comments on the legal progress achieved by the
amendments -- clarification of the bona fide principle -- clarification of the status of the use of trade
marks -- establishment of "likelihood of confusion" as the criterion in determining trade mark
infringement -- promotion of a rational regression of the well-known trade mark system.
Subject: Trade marks--law and legislation--China
SNIPER No.: 2014/02183
Author: Williams, Michael
Author: Smith, Rebecca
Title: Searching for the silver bullet: how website blocking injunctions are changing online IP
enforcement
Source: Australian Intellectual Property Journal. Vol. 25 No. 2, December 2014, pp. 59-73.
Abstract: Online copyright infringement widely recognised as a problem -- disagreement about the
best form of response -- recent focus has been on legislative and non-legislative "graduated
response" schemes -- introduced in many countries but continue to be controversial -- Australia
slow to respond to the problem -- overrepresentation of Australians amongst the ranks of global
internet infringers -- Australian government in 2014 began review of potential legislative options to
address online infringement -- one option put forward was the potential for rights holders to be
given a sui generis right of action to obtain "no fault" website blocking injunctions against ISPs -announcement that the Australian government intends to amend the Copyright Act 1986 (Cth) to
allow rights holders to seek such injunctions -- analysis of the case for website blocking injunctions
-- how this form of relief has emerged as the preferred method of tackling online infringement in the
United Kingdom and Europe.
Subject: Copyright infringement
Subject: Electronic copyright
Subject: Injunctions--communication services industry--Australia
Subject: Carriage service providers--Australia
SNIPER Bulletin – February 2015
Page 19 of 29
SNIPER No.: 2014/02149
Author: Coburn, Tony
Title: Security interests affecting IPRs: finding your way around the PPSA
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 10, December 2014, pp. 289291.
Abstract: Personal Property Securities Act 2009 (PPSA) -- some practical effects of the Personal
Property Securities Register -- quick guide for IP lawyers -- what is found on the PPS Register -what a "security interest" is -- licensing of intellectual property rights (IPRs) -- what "intellectual
property" is -- benefit of registration under the PPSA -- kind of registration needed for relevant IPRs
-- advantages of serial number registration -- relevant "serial number" for IPRs -- whether there are
other things to consider in a financing statement -- whether the PSS Register has to show dealings
Subject: Intellectual property management--Australia
Subject: Financial management--Australia
SNIPER No.: 2014/02073
Author: Lince, Tim
Title: Shining a light on the Darknet
Source: World Trademark Review. No. 51, October-November 2014, pp. 12-17.
Abstract: Risks to brand owners of the Darknet -- history of the Darknet -- adoption of the Tor
browser as an indicator of the growing size of the Darknet -- growth in the number of marketplaces
despite the closure of the Silk Road marketplace -- how to access the Darknet -- factors which lead
to an increase in the use of the anonymous internet -- new front in the war against counterfeiting -the issue of fraud and the implications for trade mark counsel and brand owners -- the challenge of
enforcement for trade mark counsel -- there is hope for brand owners that tackling enforcement on
the Darknet will improve -- education to raise awareness of the issues.
Subject: Trade mark infringement
Subject: Counterfeiting
Subject: Brand management
Subject: Internet
SNIPER No.: 2014/02123
Author: Vanzetti, Adriano
Title: Smoking or physical exercise?
Source: European Intellectual Property Review. Vol. 36 No. 10, 2014, pp. 613-618.
Abstract: Recent legislation on tobacco products -- paternalism -- Australia's world-leading plain
packaging of tobacco Laws -- European Union's proposal on labelling and packaging of tobacco
products -- limitation of personal freedom -- adoption of a generic packet would mean that
manufacturers would be deprived of the only instrument of competition -- problems of compatibility
with the provisions of the TRIPS Agreement.
Subject: Trade dress--law and legislation--Europe
Subject: Trade dress--manufacturing and processing industry--Europe
SNIPER Bulletin – February 2015
Page 20 of 29
SNIPER No.: 2014/02116
Author: Howard, Katrina
Title: Sufficiency, fair basis and inutility under Australian patent law: an historical comparative
review
Source: Intellectual Property Forum. No. 99, December 2014, pp. 13-20.
Abstract: A report prepared by the author in 2009 for the Institute of Patent and Trade Mark
Attorneys of Australia (IPTA) supporting legislative changes to s. 40 of the Patents Act 1990 -compared Australian laws on fair basis, inutility and sufficiency with equivalent laws in Europe, the
US and UK -- the current Australian tests - sufficiency -- the current Australian tests - fair basis -the concept of "sound prediction" -- the decision in Genetics Institute v Amgen and comments on
Biogen v Medeva -- comparison with US law -- comparison with UK law -- comparison with
European law
Subject: Patents--law and legislation--Australia
Subject: Patent claims--Australia
Subject: Patent claims--United States
Subject: Patent claims--United Kingdom
Subject: Patent claims--Europe
Subject: Patents--case law
SNIPER No.: 2014/02152
Author: Olsen, Marina
Author: Knight, Peter
Title: Survival of rights and obligations after termination of IP contracts: IP exclusive licensee gets
stone cold reception and made to share in patent litigation costs after termination
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 10, December 2014, pp. 298300.
Abstract: Austral Masonry (NSW) Pty Ltd v Cementech Pty Ltd -- patentee Cementech entered
into a licence of a patent with Austral Masonry -- infringement proceedings against another
company, Adbri Masonry, commenced by Cementech -- Austral asked to contribute to the cost of
litigation -- whether the requirement to contribute to legal costs survived the expiry of the licence
agreement -- other cases -- importance of clear drafting of all contracts
Subject: Patent licensing--case law--Australia
Subject: Patent litigation--costs--Australia
SNIPER No.: 2014/02147
Author: Barrett, Joel
Title: A tale of two selfies: photography and the problem of copyright authorship
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 10, December 2014, pp. 278283.
SNIPER Bulletin – February 2015
Page 21 of 29
Abstract: Historically, the photograph has fit least comfortably within the traditional paradigm of
copyright authorship -- a brief focus on the history -- struggle with how to conceptualise the author
of a photograph in order to determine questions of infringement and subsistence -- 1883 case of
Nottage v Jackson regarding a photo of the Australian cricket team -- the selfie age -- movie star
selfie by Ellen DeGeneres at the 86th Academy Awards in March -- exposing the American and
British approaches -- Brod v General Publishing Group -- Creation Records Ltd v News Group
Newspapers Ltd -- looking through the lens of Australian law -- a chance to develop a negative into
a positive?
Subject: Copyright owners' rights--Australia
Subject: Moral rights--Australia
Subject: Copyright--case law--Australia
SNIPER No.: 2014/02077
Title: Time to shop around
Source: World Trademark Review. No. 51, October-November 2014, pp. 44-52.
Abstract: Private practice review of Community trademark court performance in 19 jurisdictions -Austria -- Belgium -- Czech Republic -- Denmark -- Estonia -- Finland -- France -- Germany -Ireland -- Italy -- Netherlands -- Poland -- Portugal -- Romania -- Slovakia -- Slovenia -- Spain -Sweden -- United Kingdom.
Subject: Legal jurisdiction--Europe
Subject: Trade mark systems--Europe
SNIPER No.: 2014/02078
Author: Collis, Patricia
Title: Traditional marks in a design world
Source: World Trademark Review. No. 51, October-November 2014, pp. 54-57.
Abstract: Increasing importance of designs in modern times but trademarks have valuable
features which ensure that designs could not or should not ever replace trademarks -- design
protection available -- limitations of design protection -- protecting brand names and logos -dealing with the copying of designs -- minimising the diversion of trade from the copying of a
successful design -- designs as product identifiers -- consumer education -- trade marks are still
needed even if consumers can identify the origin of the product from the design -- ensuring that a
trademark registration remains valid -- design trends come and go but trade mark protection can
be ongoing as long as they are maintained.
Subject: Brand management
Subject: Industrial designs
Subject: Industrial design owners' rights
Subject: Trade marks
Subject: Trade mark owners' rights
SNIPER Bulletin – February 2015
Page 22 of 29
SNIPER No.: 2014/02130
Author: Gupta, Paul R.
Author: McClintock, Clive
Title: United States Supreme Court adopts a more flexible approach to obtaining attorneys' fees in
patent cases: Octane Fitness LLC v Icon Health & Fitness Inc and Highmark Inc v Allcare Health
Management System Inc
Source: European Intellectual Property Review. Vol. 36 No. 10, 2014, pp. 679-684.
Abstract: United States Supreme Court relaxed the standard applied by US courts for awarding
attorneys' fees in patent cases -- US legal system brought closer to that of the United Kingdom -second ruling issued by the Supreme Court -- Supreme Court's Octane decision -- Highmark
decision -- proposed legislation -- federal trial courts have broad discretion to make rulings on
attorneys' fees.
Subject: Lawyers--costs--United States
Subject: Patent litigation--United States
Subject: Patent validity--case law--United States
SNIPER No.: 2014/02153
Author: Spies, Anna
Title: The US Supreme Court's Aereo decision: online television streaming, the Optus TV Now
decision and cloud computing
Source: Australian Intellectual Property Law Bulletin. Vol. 27 No. 10, December 2014, pp. 302306.
Abstract: American Broadcasting Companies Inc v Aereo FKA Bamboom Labs Inc case -copyright infringement -- the Aereo service -- the Supreme Court's decision -- the Australian law
and the TV Now case -- National Rugby League Investments Pty Ltd v Singtel Optus Pty Ltd (TV
Now) decision -- application of Australian copyright law to television streaming services -implications for cloud computing
Subject: Copyright infringement--case law--United States
Subject: Electronic copyright--Information technology industry
Subject: Electronic copyright--case law--Australia
SNIPER No.: 2014/02083
Author: Marsh, Michelle Mancino
Author: Li, Anne Elise Herold
Author: Shea, Daniel
Title: Using numbers to win your case
Source: World Trademark Review. No. 51, October-November 2014, pp. 75-79.
SNIPER Bulletin – February 2015
Page 23 of 29
Abstract: Trade mark cases and the presentation of survey data -- survey data and the likelihood
of confusion -- example of the space shuttle Challenger where well presented data could have
prevented the flight from going ahead -- five steps to presenting data successfully -- selecting the
appropriate universe from which to draw a sample -- selecting a representative sample -presenting all of the data to obtain the trust of the intended audience -- provide background
information in presenting the data in context -- presenting data in a clear and simple way to aid
credibility.
Subject: Trade marks--statistics
Subject: Trade mark litigation--analysis
Subject: Evidence
SNIPER No.: 2014/02066
Author: Roberts, Tim
Author: Poore, Alasdair
Title: Visit of All China Patent Attorneys Association (ACPAA): report of a CIPA/ACPAA seminar
at Worceser College Oxford, 29 September 2014
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent
Agents. Vol. 43 No. 10, October 2014, pp. 549- 552.
Abstract: Talks on variety of subjects by patent attorneys from China -- comments from UK patent
attorneys highlighting points of interest and differences from European practice -- common
mistakes of European applicants filing in China -- functional claiming -- new subject-matter in
amendment -- timing of amendments -- consumer method claims -- admission of prior art -multiple dependent claims -- what Chinese applicants look for in their European patent attorneys -what UK applicants seek in their Chinese attorneys -- enforcement and forum shopping -- inventive
step objections in chemical cases
Subject: Patent attorneys--China
Subject: Patent attorneys--Europe
Subject: Intellectual property management--China
SNIPER No.: 2014/02072
Author: Tumbridge, James R.
Author: Harris, Paul
Author: Mikheev, Kate
Title: Wang Lao Ji: the colourful new Budweiser story
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of Patent
Agents. Vol. 43 No. 10, October 2014, pp. 568-570.
Abstract: Domestic intellectual property dispute in China -- the "red can" case between the
companies Guangzhou Pharmaceutical Holding Ltd (GPHL) and Jia Duo Bao Beverage Co. Ltd
(JDB) -- Wang Lao Ji (WLJ) is a herbal tea made from traditional Chinese medicine -- said to
reduce and eliminate general bodily pains -- facts of the case -- trade mark dispute -- licensing
issues -- advertising issues -- significance of the ongoing dispute -- public approach taken by the
parties during litigation raise many IP protection issues faced by Chinese businesses -- highlighted
how culture plays a part in domestic Chinese disputes
SNIPER Bulletin – February 2015
Page 24 of 29
Subject: Trade mark ownership--case law--China
Subject: Trade mark use--China
Subject: Trade mark licensing--case law--China
Subject: Branding--China
SNIPER No.: 2014/02145
Author: Kupecz, András
Title: Who owns CRISPR-Cas9 in Europe?
Source: Nature Biotechnology. Vol. 32 No. 12, December 2014, pp. 1194-1196.
Abstract: Genome editing tool -- CRISPR-Cas9 -- clustered, regularly interspaced, short
palindromic repeats (CRISPR)?CRISPR-associated protein 9 (Cas9) system (CRISPR-Cas9) -several patent applications filed by rival groups -- first US patent (Zhang as inventor) awarded to
the Broad Institute and the Massachusetts Institute of Technology -- equivalent European
application undergoing examination at the European Patent Office -- third party observations filed
by parties trying to prevent grant of the European patent -- arguments relating to novelty and
inventive step -- recent developments in the prosecution of the Zhang patent in Europe -differences between the European and the US CRISPR-Cas9 IP situation -- how to deal with these
and other pending CRISPR-Cas9 patent applications if wanting to use the technology in Europe -need for clarity
Subject: Gene patents--Europe
Subject: Gene patents--United States
Subject: Patenting of life forms
SNIPER No.: 2015/00012
Author: Ramamoorthi, Roopa
Author: Graef, Katy M.
Author: Krattiger, Anatole F.
Author: Dent, Jennifer C.
Title: WIPO Re-Search: catalysing collaborations to accelerate product development for diseases
of poverty
Source: Chemical Reviews. Vol. 114 No. 22, 26 November 2014, pp. 11272-11279.
Abstract: World Intellectual Property Organization (WIPO), BIO Ventures for Global Health
(BVGH), and eight leading pharmaceutical companies
(Alnylam, AstraZeneca, Eisai, GlaxoSmithKline (GSK), MSD,4 Novartis, Pfizer, and Sanofi) joined
forces to establish the WIPO Re:Search consortium -- WIPO Re:Search aims to accelerate the
development of new drugs, vaccines, and diagnostics for NTDs, malaria, and tuberculosis by
connecting the resources of private industry to academic and non-profit researchers with novel
product discovery or development ideas for these diseases -- proactive partnering -- sharing
intellectual property assets-- natural products for tuberculosis -- kinase inhibitors for malaria and
tuberculosis -- recycling data for global health
Subject: Computer-related inventions--pharmaceutical industry
Subject: Pharmaceuticals--research
Subject: Research and development--health and community services industry
SNIPER Bulletin – February 2015
Page 25 of 29
SNIPER No.: 2014/02143
Author: Fink, Carsten
Author: Khan, Mosahid, 1969Author: Lamb, Ryan
Author: Le Feuvre, Bruno
Author: Zhou, Hao
Added author: World Intellectual Property Organization
Title: World intellectual property indicators 2014 [electronic resource]
Source: World Intellectual Property Indicators. 2014.
General Note: Ninth report in a series.
Abstract: Annual international IP statistical survey -- World Intellectual Property Organisation
(WIPO) -- highlights -- uneven pace of global economic recovery -- growth in IP filings in China and
the United States -- decline in Europe and Japan -- worldwide increase in filing of 9 percent for
patents, 6.4 percent for trade marks 2.5 percent for industrial designs and 6.3 percent for plant
varieties -- Asia received 58.4 percent of patent applications filed worldwide, 48.2 percent of trade
mark filings and 69.4 percent of designs filings worldwide -- in top 20 IP offices, China (+26.4
percent) and Australia (+12.7 percent) saw the fastest growth in patent filings -- overview of IP
activities -- patents, utility models and microorganisms -- trade marks -- industrial designs -- plant
variety protection -- statistical tables
Subject: Patent Co-operation Treaty (1970 June 19)
Subject: Budapest Treaty on the International Recognition of the Deposit of Microorganisms for
the Purposes of Patent Procedure (1977 April 28)
Subject: Madrid Agreement Concerning the International Registration of Marks (1891 April 14)
Subject: Hague Agreement Concerning the International Registration of Industrial Designs (1999
July 2)
Subject: Intellectual property--statistics
Subject: Patents--statistics
Subject: Minor patents--statistics
Subject: Trade marks--statistics
Subject: Industrial designs--statistics
Subject: Plant breeder's rights--statistics
SNIPER Bulletin – February 2015
Page 26 of 29
© Commonwealth of Australia 2013
Published by: IP Australia
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1300 65 10 10
www.ipaustralia.gov.au