Searchable Networked Intellectual Property Electronic Resource
SNIPER
Bulletin
June 2013
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SNIPER Bulletin
Library, IP Australia
SNIPER No.: 2013/01123
Author: Hayne, Karen Anne
Title: 2012 Down Under: a sample of interesting cases for brand owners
Source: World Trademark Review. No. 43, June-July 2013, pp. 61-63.
Summary: Key issues for rights holders throughout 2012 -- some of the most significant
and their likely impact -- parallel imports -- Paul's Retail Pty Ltd v Sporte Leisure Pty Ltd -Lonsdale Australia Limited v Paul's Retail Pty Limited -- risks of adopting overseas brands
-- Winnebago Industries, Inc v Knott Investments Pty Ltd -- Tivo Inc v Vivo International
Corporation Pty Ltd -- registering the name of a building as a trade mark -- Millennium &
Copthorne International Ltd v Kingsgate Hotel Group Pty Ltd.
Subject: Trade mark registration--case law--Australia
Subject: Parallel importing--case law--Australia
SNIPER No.: 2013/01148
Author: Le Feuvre, Bruno
Added author: World Intellectual Property Organization. Economics and Statistics
Division
Title: 2013 PCT yearly review: the international patent system
Source: PCT Yearly Review. 2013
General Note: Nineteenth report in a series. Title changed from International Patent
System Yearly Review in 2010.
Summary: Patent Co-operation Treaty (PCT) -- international patent applications, 2012 -use of the PCT system -- performance of the PCT system -- development of the PCT
system -- PCT contracting states.
Subject: Patent Cooperation Treaty (1970)--statistics
Subject: International patent applications--statistics
SNIPER No.: 2013/01111
Author: Inovia (Firm)
Title: The 2013 U.S. global patent and IP trends indicator
Source: U.S. Global Patent and IP Trends Indicator. April 2013.
General Note: Fourth report in a series.
Summary: Foreign filing strategies of United States patent owners -- results from survey
of 125 companies and universities conducted in January 2013 -- 2012 filings in review -foreign filing and global outlook -- IP budgets and firm workflow changes -- outlook for
2013.
Subject: Patent filing--statistics--United States
Subject: Intellectual property management--statistics--United States
SNIPER No.: 2013/00996
Author: Tse, Owen
Title: The advantages of administrative actions
Source: Managing Intellectual Property. China IP Focus, 2013, pp. 88-92.
Summary: iPad v Proview Shenzhen trade mark dispute -- Proview enforced its rights
through administrative actions and litigation -- demonstrates effectiveness and importance
of proper enforcement strategies and the potential value of intellectual property (IP) rights
in China -- IP enforcement options in China -- things to ascertain before taking action -administrative actions -- file complaints to local administration for industry and commerce
(AICs) -- Customs recordal -- domain name dispute resolution -- cease and desist letters
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and media announcements -- litigation.
Subject: Intellectual property enforcement--China
Subject: Administrative law--China
SNIPER No.: 2013/01015
Author: Rana, Lucy
Title: 'Advertised before acceptance as good as 'accepted' for registration of a mark
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 2, February 2013, pp. 44.
Summary: Registration of a trade mark in India -- advertisement of application under
Section 20 -- condition precedent for issuance of registration certificate -- Intellectual
Property Appellate Board in Mls Jagdish Sweets and Farsan Ltd v. Jagdish Food Private
Ltd (dated November 26,2012) -- Registry of passing the order' Advertised before
Acceptance' (ABA).
Subject: Trade mark registration--case law--India
SNIPER No.: 2013/01012
Author: Delaney, Hayden
Title: Agribusiness sector effectively protects brands with trademarks
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 2, February 2013, pp. 41.
Summary: Branding increasingly more important for primary producers and marketers -products are heavily commodised -- makes like products indistinguishable -- products can
be effectively differentiated from similar products through brand association and trade
mark registration -- tools available to protect products in the agribusiness sector -trademark serve as a 'badge of origin'.
Subject: Trade mark owners' rights--agriculture industry
Subject: Branding--agriculture industry
SNIPER No.: 2013/00693
Author: Joseph, Paul
Title: Alloy wheels are not spare parts
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 3, March 2013, pp.
196-197.
Summary: Design right infringement -- Bayerische Motoren Werke Aktiengesellschaft v
Round and Metal Ltd [2012] EWHC 2099 (Pat), 27 July 2012 -- The Patents Court,
England and Wales found that the spare parts defence under Article 110(1) of the
Community Designs Regulation (CDR) does not apply to replica wheels for cars -- Article
110(1) CDR -- Article 9(1) Community Trade Marks Regulation (CTMR) -- also liable for
infringement of BMW's Community trade marks -- commentary on the purposive
interpretation of EU regulations -- manufacturers and distributors of spare parts should
consider whether they need a licence to trade in certain products.
Subject: Trade mark use--Europe
Subject: Trade mark infringement--case law--Europe
SNIPER No.: 2013/01200
Author: Heindl, Sabiene
Title: Another slice of the "e-content" Apple pie
Source: Internet Law Bulletin. Vol. 16 No. 1, April/May 2013, pp. 17-18.
Summary: Inability of consumers to sell, lend or pass on ebooks to family/friends or third
parties -- Apple filed patent for managing access to digital content files -- Apple and
Amazon patents enabling the resale, lending and return of ebooks and other econtent --
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SNIPER Bulletin
Library, IP Australia
intermediaries and rights holders seeking financial advantage of the "second hand market"
-- opens up a number of new business models -- boundaries -- borrowing -- returns -outcome may depend on US case Capitol records v ReDigi -- claimed as world's first preowned digital marketplace.
Subject: Electronic rights management--culture and entertainment industry
Subject: Intellectual property licensing--culture and entertainment industry
SNIPER No.: 2013/00933
Author: Rossi, Laura
Title: Applicability and application of machine translation quality metrics in the patent field
Source: World Patent Information. Vol. 35 No. 2 June 2013, pp. 115-126.
Summary: Assessment of different machine translation (MT) quality metrics -- strengths
and weaknesses -- problems and approaches to this in the patent field -- metrics and
shortcomings of automated evaluation -- approach using human evaluation of MT
explained and tested -- methodology and tooling developed by LexisNexis and its MT
provider Asia Online.
Subject: Translations--analysis
SNIPER No.: 2013/01173
Author: Helfgott, Samson
Title: Applying "conflicting applications" as prior art: can harmonization be achieved?
Source: World Intellectual Property Report. Vol. 27 No. 5, May 2013, pp. 37-42.
Summary: Conflicting applications -- prior filed, subsequently published prior art -different approaches to applying conflicting applications as prior art in US, Japan and the
European Patent Office (EPO) -- difficulties in harmonizing approaches in this area -concepts involved in applying conflicting applications as prior art -- different definitions in
the three systems of conflicting applications, whole contents, and self-collision -- how
conflicting applications are treated in the EPO, Japan and the US -- occurrence of
conflicting applications -- compromise position -- take the "best" of each practice -- seek a
reasonable position that can be widely accepted.
Subject: Patent novelty
Subject: Inventive step
Subject: Harmonisation of laws
SNIPER No.: 2013/01112
Author: Adeney, Elizabeth
Title: Appropriation in the name of art: is a quotation exception the answer?
Source: Australian Intellectual Property Journal. Vol. 23 No. 3, April 2013, pp. 141-159.
Summary: Problem of creative appropriations -- Kookaburra litigation in EMI Songs
Australia Pty Ltd v Larrikin Music Publishing Pty Ltd (2011) -- extent to which a quotation
exception, consistent with Art 10 of the Berne Convention, should be incorporated into
Australian law -- consideration of the practical application of such a quotation exception in
European jurisdictions, particularly Germany) -- form in which the suggested exception
might be incorporated into Australian law.
Subject: Fair use (Copyright)--Australia
Subject: Copyright--reform--Australia
SNIPER No.: 2012/02864
Author: Lan, Rongjie
Title: Are intellectual property litigants treated fairer in China's courts?: an empirical study
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of two courts
Source: IIC: International Review of Intellectual Property and Competition Law. Vol. 43
No. 7, 2012, pp. 751-771.
Summary: Comparing intellectual property cases with civil cases in China -- IP cases
more often involve difficult and scientific issues -- at least one foreign party -- findings from
empirical research in two sample courts and other data -- epistemic deference of judges
and court leaders to expert opinions on scientific and technical matters -- more care and
scrutiny from the court in foreign-related cases -- higher participation of lawyers means IP
cases generally tried in a fairer manner in China's courts.
Subject: Intellectual property litigation--China
Subject: Legal procedure--China
SNIPER No.: 2013/00422
Author: Glass, Gregory
Title: Asia IP awards winners revealed
Source: Asia IP: Protecting your Intellectual Assets. Vol. 4 No. 10, November 2012, pp.
19-47.
Summary: Winners of the 2012 Asia IP Awards -- top trademark and patent practices in
16 jurisdictions in Asia and the Pacific -- Australia -- China -- Hong Kong -- India -Indonesia -- Japan -- Malaysia -- New Zealand -- Pakistan -- Philippines -- Singapore -South Korea -- Sri Lanka -- Taiwan -- Thailand -- Vietnam -- International.
Subject: Intellectual property offices
Subject: Patent attorneys
Subject: Trade mark attorneys
SNIPER No.: 2013/00424
Author: Mirandah, Gladys
Title: Asia-Pacific: changing its IP landscape for growth
Source: Asia IP: Protecting your Intellectual Assets. Vol. 4 No. 10, November 2012, pp.
51-53.
Summary: Important changes in the IP laws of South and Southeast Asia -- IP laws of
various countries in the region have moved forward in different ways – Brunei -- India -Malaysia -- Indonesia -- Philippines -- Singapore -- Thailand.
Subject: Intellectual property law--reform--Asia
SNIPER No.: 2012/01534
Author: Dutfield, Graham
Added author: Quaker United Nations Office
Title: Assessing the development impacts of intellectual property negotiations, proposals,
reforms and agreements: a concept note
Source: Occasional Paper (Quaker United Nations Office). No. 19, February 2006.
Summary: Economic and social impact of IP reform -- IP policy -- good policymaking
cannot be based solely on the implementation of obligations accepted in multilateral
treaties or regional or bilateral trade agreements -- demanding changes to national
regimes may not serve the interests of their citizens and other domestic stakeholders -use of Development Impact Assessments (DIA) -- potential limitation of DIAs -- basic
elements of DIAs -- consultation process -- food security implications.
Subject: Intellectual property--reform
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SNIPER Bulletin
Library, IP Australia
SNIPER No.: 2013/01141
Author: Colombo, Nicoletta
Title: Attention to detail
Source: World Trademark Review. No. 43, June-July 2013, pp. 122-123.
Summary: Trade mark licences -- exclusive, partially exclusive and non-exclusive
licences -- problems with non-exclusive licences -- breach of licensing agreement -Copad Giurisprudenza Annotata di Diritto Industriale -- contract.
Subject: Intellectual property licensing--Italy
Subject: Brand management--Italy
SNIPER No.: 2013/01130
Author: Hu, Gang
Title: Beijing court issues breakthrough ruling on similarity
Source: World Trademark Review. No. 43, June-July 2013, pp. 88-89.
Summary: Difficulty of assessing whether goods and trade marks are similar -- examining
authorities in China have developed an official handbook "the Classification of Similar
Goods and Services" -- has helped to facilitate administrative examinations -- too rigid in
some cases -- milestone administrative litigation was issued by the Beijing High Court in
AUDI AG v TRAB -- background to the case -- the decision -- two important issues raised
and confirmed by the case.
Subject: Confusing similarity--case law--China
Subject: Trade mark classification--China
SNIPER No.: 2013/01206
Author: Lewinski, Silke von
Added author: Max-Planck-Institut für Immaterialgüter- und Wettbewerbsrecht
Title: The Beijing Treaty on Audiovisual Performances
Source: Max Planck Institute for Intellectual Property and Competition Law Research
Paper. No. 13-08, 22 March 2013.
General Note: Also published as: Auteurs and Media 2012, No. 6, pp. 539-546.
Summary: Development and content of the Beijing Treaty on Audiovisual Performances -recognition and protection of audiovisual performers in international law -- background to
the treaty -- treaty content -- articles agreed at the 2000 diplomatic conference -- Article 12
on transfer of rights -- recital in the Preamble on the importance of the WIPO Development
Agenda -- agreed statements to Article 1 -- definition of performers under Article 2(a) -entry into force.
Subject: Beijing Treaty on Audiovisual Performances
Subject: Cinematographic works--treaties
Subject: Neighbouring rights--treaties
SNIPER No.: 2013/01145
Author: Ablogina, Natalia
Title: The benefit of knowledge
Source: World Trademark Review. No. 43, June-July 2013, pp. 130-131.
Summary: Legal and practical requirements for licence agreements in Russia -recordation -- basis for damage calculation -- proper evidence of use -- Customs issues -taxation and royalty payment -- distribution versus licence agreement.
Subject: Intellectual property licensing--law and legislation--Russia
Subject: Trade mark licensing--Russia
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SNIPER No.: 2013/01140
Author: Narula, Ranjan
Title: Benefits for both parties
Source: World Trademark Review. No. 43, June-July 2013, pp. 120-121.
Summary: Reasons for licensing trade marks in India -- government initiatives that helped
to develop trademark licensing in India -- expansion of the definition of 'permitted use' -automatic payment of royalties for use of a trademark or brand name without any
restriction on the amount -- protection of licensor's rights -- Baker Hughes Limited v Hiroo
Khushalani -- Fedders North American v Show Line -- Velcro Industries BV v Velcro India
Ltd -- key licence elements -- exclusive or non-exclusive licence -- online sale -- licence
recordation.
Subject: Intellectual property licensing--India
Subject: Trade marks--law and legislation--India
SNIPER No.: 2013/01172
Author: Simone, Joseph
Title: Best practices for criminal enforcement of trademarks in China
Source: World Intellectual Property Report. Vol. 27 No. 5, May 2013, pp. 35-36.
Summary: Chinese government has taken steps in recent years to make criminal
enforcement available to rights holders -- legislative reforms being planned -- best
practices to follow to increase chances of cost-effective return on enforcement dollars -need to understand China's thresholds for criminal prosecution and rules and exceptions - tips for working with police, local administrative authorities and prosecutors.
Subject: Trade mark enforcement--China
SNIPER No.: 2013/00997
Author: Xu, Chao
Title: Better and quicker copyright enforcement
Source: Managing Intellectual Property. China IP Focus, 2013, pp. 94-98.
Summary: Draft Amendments to the Chinese Copyright Law -- significant changes in
style and content -- major revisions in subject matter -- works of applied art -- audiovisual
works -- exclusive rights -- right of pursuit -- exploitation of audiovisual work and
distribution of profits -- employers' exclusive right to the use of works for hire -- ownership
of exclusive rights -- term of protection for exclusive rights -- limitation to exclusive rights -remedies -- statutory compensation and punitive compensation -- administrative mediation
for copyright disputes.
Subject: Copyright--law and legislation--China
Subject: Copyright--reform--China
SNIPER No.: 2013/01063
Author: Kazhdan, Daniel
Title: Beyond patents: The Supreme Court's evolving relationship with the Federal Circuit
Source: Journal of the Patent and Trademark Office Society. Vol. 94 No. 4, 2012, pp.
275-299.
Summary: Supreme Court review of Federal Circuit patent/non-patent decisions -frequent review -- use of the Solicitor General -- harsh review -- critique of formalism -reversals for lack of deference -- insulation and its discontents -- effects of insulation -lack of Circuit splits -- lack of familiarity with the Federal Circuits judges and areas of law -arrogation of power -- formalism and perceptions of formalism -- bias at the Federal Circuit
-- patent questions and exclusive jurisdiction.
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SNIPER Bulletin
Library, IP Australia
Subject: Legal procedure--United States
Subject: Patent litigation--United States
SNIPER No.: 2013/01128
Author: Lue, Henry
Title: A big year for rights holders in Canada
Source: World Trademark Review. No. 43, June-July 2013, pp. 82-83.
Summary: Amendments to the Canadian Trademarks Act -- non-traditional marks now
available in Canada -- purposive and contextual confusion analysis -- use of a trade mark
in association with services in cyberspace -- clearly descriptive trade marks -- registration
and use abroad basis requires use abroad prior to filing -- proposed changes to the
Trademarks Act.
Subject: Trade marks--reform--Canada
Subject: Law--reform--Canada
SNIPER No.: 2013/01038
Author: Cummings, Brian A.
Title: Boom or bust: how to structure technology transfer for success
Source: Les Nouvelles. Vol. 48 No. 1, March 2013, pp. 52-59.
Summary: University and government research in U.S. -- innovative capacity and
economic competitiveness -- university commercialisation -- Technology Transfer
Memorandum -- creation of an innovative commercialisation model based on new, broad
and comprehensive performance management framework -- performance management
complexities -- performance improvement approach -- new framework includes metrics for
effectiveness, innovation, people efficiency, financial efficiency, performance -implementing a performance based structure at Ohio State University.
Subject: Technology transfer--education and training industry.
Subject: Business collaboration--United States
Subject: Intellectual property management--United States
SNIPER No.: 2013/01129
Author: Lieberstein, Marc A.
Title: Brand licensing in the US: advice for Chinese brands
Source: World Trademark Review. No. 43, June-July 2013, pp. 84-87.
Summary: Chinese brand owners expanding worldwide -- benefits of such expansion -specific needs for Chinese brand owners and their potential United States licensing
partners -- licensing provisions that Chinese brand owners should consider in connection
with any licensing arrangement in the United States -- lure of the US market -- distribution
channels allow for brand expansion -- licensing objectives for Chinese brand owners -using the US legal system to protect Chinese brands -- implement best practices for
licensing in the United States -- converting the Chinese brand into a US mark for the US
audience -- additional resources for Chinese brand owners.
Subject: Intellectual property licensing--China
Subject: Brand management--China
Subject: Intellectual property licensing--United States
SNIPER No.: 2013/01176
Author: Burshtein, Sheldon
Title: Canadian court rules on obligations to defend and indemnify in a licence agreement
Source: World Intellectual Property Report. Vol. 27 No. 5, May 2013, pp. 46-48.
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SNIPER Bulletin
Library, IP Australia
Summary: Coastal Contacts v. Elastic Path Software Inc -- decision of the British
Columbia Supreme Court -- motion for leave to appeal an arbitration decision -- claim of a
software licensee against its licensor for breach of licensor's duty to defend and indemnify
licensee in a suit by third party alleging patent infringement by licensee's use of the
software -- requirements to appeal and arbitration award -- facts of the case -- the licence
agreement -- arbitration award -- leave to appeal granted -- errors of law -- lessons
learned for both licensors and licensees.
Subject: Patent licensing--case law--Canada
Subject: Computer-related inventions--case law--Canada
SNIPER No.: 2013/00870
Author: Dixon, Allen
Title: Chain gang
Source: Intellectual Property Magazine. April 2013, pp. 56-57.
Summary: Increase in international trade -- benefit and downside of global supply chains
-- The Conference Board report and survey, 'Safeguarding Intellectual Property and
Addressing Corruption in the Global Supply Chain' -- key findings -- intellectual property
(IP) risks -- Center for Responsible Enterprise and Trade (CREATe.org) -- developing
ways to help companies collaborate with supply chain members to improve internal
business systems and processes for protecting IP -- piloting an online service -- CREATe
Leading Practices -- self-assessment -- independent evaluation -- improvement plan -findings.
Subject: Risk--management
Subject: International trade
SNIPER No.: 2013/01104
Author: Rangnekar, Dwijen
Title: The challenge of intellectual property rights and social justice
Source: Development. Vol. 54 No. 2, 2011, pp. 211-214.
Summary: Balance needed to sustain economic growth while ensuring local peoples'
rights, identity and livelihood -- human rights and intellectual property rights -- farmers'
rights -- geographical indications -- rights to access and benefit sharing.
Subject: Indigenous issues in intellectual property
Subject: Human rights
SNIPER No.: 2013/01007
Author: Zhang, Anna
Title: Changes on the way
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 2, February 2013, pp. 3032.
Summary: Competition law -- passing of the Competition Ordinance by the Legislative
Council in Hong Kong -- two conduct rules -- exclusions and exemptions -- implications on
IP -- enforcement and sanctions -- structural problems -- small businesses -- anticompetitive behaviour.
Subject: Competition law--Hong Kong
SNIPER No.: 2013/01186
Author: Harhoff, Dietmar
Title: Citations, family size, opposition and the value of patent rights
Source: Research policy. Vol. 32 No. 8, 2003, pp. 1343-1363.
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SNIPER Bulletin
Library, IP Australia
General Note: Erratum to Citations, family size, opposition and value of patent rights. See
also 2013/01185.
Summary: Estimates the value of patent rights from a survey of patent-holders -- set of
indicator variables in order to model the value of patents -- number of references to the
patent literature as well as the citations a patent receives, are positively related to its value
-- references to the non-patent literature are informative about the value of pharmaceutical
and chemical patents -- not in other technical fields -- patents which are upheld in
opposition and annulment procedures and patents representing large international patent
families are particularly valuable.
Subject: Value of intellectual property--economics
Subject: Patents--analysis
SNIPER No.: 2013/00988
Author: Li, Forest
Title: Civil procedure and patents
Source: Managing Intellectual Property. China IP Focus, 2013, pp. 40-44.
Summary: Amendments to China's three most important procedural laws -- impact of
amendments to Civil Procedure Law on patent filing -- honesty and credibility -- civil public
interest litigation -- addition of an action preservation -- sanctions on malicious and
fraudulent litigation -- third party revocation -- scope of the related intrusting agent -exceptions for witnesses -- period to present evidence.
Subject: Law--reform--China
Subject: Legal procedure--China
SNIPER No.: 2013/01174
Author: Moore, Sebastian
Title: CJEU dismisses Spain and Italy's objections to unitary patent but obstacles remain
Source: World Intellectual Property Report. Vol. 27 No. 5, May 2013, pp. 43-44.
Summary: Court of Justice of the European Union decision in Spain and Italy v. Council
of the European Union -- dismissed objections to the use of enhanced cooperation to
introduce a pan-European unitary patent right -- content of the objections and the CJEU's
response – Spain’s second legal challenge to the unitary patent -- progress towards
establishing the Unified Patent Court (UPC)-- Unified Patent Court Agreement signed by
25 of the 27 EU member countries -- Unified Patent Court Preparatory Committee set up
to deal with technical issues, including Rules of Procedure of the UPC.
Subject: Patent systems--law and legislation--Europe
Subject: Regional patents--Europe
Subject: Patent litigation--procedure--Europe
SNIPER No.: 2013/00993
Author: Jiang, Jiancheng
Title: Clarification in dealing with patent errors
Source: Managing Intellectual Property. China IP Focus, 2013, pp. 68-72.
Summary: Text of a patent may still have errors in the description or in the claims -immaterial minor ones -- critical errors which may affect the validity of the patent or
exercise of the patent right -- after the patent right is granted, the patentee cannot request
amendments to the text of the patent on his own initiative except for the amendment to
claims in invalidation proceedings -- amendments to the claims in invalidation proceedings
are highly restricted -- where a dispute arises, how to judge whether relevant errors affect
the validity of the patent right or the determination of the protection scope is an important
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issue in patent trial practice -- recent Supreme Court decision on a retrial case.
Subject: Patent applications--China
Subject: Patent claims--China
SNIPER No.: 2012/02867
Author: Suluk, Cahit, 1971Title: A comparative law perspective of the protection of unregistered industrial products
under Turkish unfair competition law
Source: IIC: International Review of Intellectual Property and Competition Law. Vol. 43
No. 7, 2012, pp. 825-846.
Summary: Implementation of unfair competition regulations and the protection of
unregistered industrial products within the Turkish jurisdiction -- Turkish industrial property
legislation and unfair competition provisions -- situation in comparative law -- different
approaches taken in common law countries and continental law countries -- criteria of
protection sought by Turkish Supreme Court of Justice -- critique of related cases -- use of
an unregistered invention or design by third parties constitutes unfair competition -determining principles of protection.
Subject: Competition law--Turkey
Subject: Intellectual property law--Turkey
SNIPER No.: 2013/00995
Author: Li, Chunhui
Title: Comparing the US and China
Source: Managing Intellectual Property. China IP Focus, 2013, pp. 80-86.
Summary: Disclosure practices in the United States and in China -- common points and
differences -- tips on drafting -- correspondence of articles and rules -- incorporation by
reference -- support from description -- support for means plus function -- formalism
versus functionalism.
Subject: Patent disclosure--China
Subject: Patent disclosure--United States
SNIPER No.: 2013/01170
Author: Koo, Dae-Hwan
Title: Comparison of the first requirement of the doctrine of equivalents between Korea
and Japan
Source: IIC: International Review of Intellectual Property and Competition Law. Vol. 44
No. 2, 2013, pp. 178-219.
Summary: Requirements for applying the doctrine of equivalents to patented and
allegedly infringing devices and processes in Korea -- comparison with Japan -investigates meaning in key terms employed in the requirements -- Supreme Court of
Korea and Supreme Court of Japan -- verifying the interchange of an 'essential part' of a
patented invention -- central technical idea -- problem-solving principle -- pertaining to a
non-essential part -- recent developments in the doctrine of equivalents in Korea and
Japan -- analysis of several Supreme Court decisions in Korea and Japan.
Subject: Intellectual property infringement--Korea (South)
Subject: Intellectual property infringement--Japan
Subject: Doctrine of equivalents--Korea (South)
Subject: Doctrine of equivalents--Japan
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SNIPER No.: 2013/01160
Author: Leung, Peter
Title: Compulsory debate at India forum
Source: Managing Intellectual Property. No. 228, April 2013, pp. 48-50.
Summary: Compulsory licensing -- hot topic at Managing IP's India IP and Innovation
Forum -- keynote speaker was Chairperson Prabha Sridevan of the IP Appellate Board -she handed down the decision upholding India's first compulsory licence -- defended
compulsory licensing as a way to balance intellectual property and public interest -- other
speakers discussed other challenges faced by pharmaceutical companies -- lawyers from
pharmaceutical companies talked about the difficulties section 8 requirements pose -ambiguities as to what constitutes efficacy -- in-house IP managers touted the benefits of
open innovation -- representatives of some of India's most successful companies talked
about international IP strategies.
Subject: Compulsory licensing--India
Subject: Pharmaceuticals--India
SNIPER No.: 2013/01061
Author: Lewis, Nathan T.
Title: Considerations for handling closely related subject matter in patent portfolios in light
of Therasense and the America Invents Act of 2011
Source: IDEA: the Intellectual Property Law Review. Vol. 53 No. 1, 2013, pp. 63-100.
Summary: Multiple patent applications filed to United States Patent and Trademark Office
(USPTO) directed with closely related subject matter -- inequitable conduct issues -- duty
of disclosure -- Dayco Products and McKesson -- dealing with prior art and office actions
from substantially similar cases -- issues associated with a client’s own prior art under
current law -- inventorship -- attribution -- derivation -- 35 U.S.C. s103(c) -- late claim for
priority/continuation-- strategies for citing prior art -- drafting and filing strategies -- Federal
Circuit decision in Therasense, Inc v. Becton Dickinson and Co. limited availability of an
inequitable conduct defence in litigation -- an available remedy for patent owners.
Subject: United States. Leahy-Smith America Invents Act
Subject: Patentability--reform--United States
Subject: Legal procedure--United States
SNIPER No.: 2013/01142
Author: Arámburu Fernandez, Lucrecia
Title: Considering goodwill
Source: World Trademark Review. No. 43, June-July 2013, pp. 124-125.
Summary: Mexico's legal framework -- definition of trade mark use -- 'effective use' of a
registered trade mark -- asset acquisition -- due diligence -- key elements to consider
before acquiring an existing business -- a corporation's assets -- goodwill -- trade mark
use -- ownership issues -- court proceedings.
Subject: Trade mark use--Mexico
Subject: Mergers and takeovers--Mexico
SNIPER No.: 2013/00423
Author: Grover, Vikram
Title: Copyright as an effective tool to restrict pass offs
Source: Asia IP: Protecting your Intellectual Assets. Vol. 4 No. 10, November 2012, pp.
48-50.
Summary: Copyright restricts "total use" of the work entitled to protection -- useful to
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check unauthorized use of copyrighted works -- Indian Copyright Act, 1957 -- common law
rights -- common law action for passing off -- protection offered under the trade mark and
copyright laws -- burden of proving a claim of passing off -- infringement of copyright
vesting in packaging and instructions of the product -- trade mark, copyright and passing
off cases handled by the Indian Courts.
Subject: Passing-off--case law--India
Subject: Copyright infringement--case law--India
Subject: Common law
SNIPER No.: 2013/01207
Author: Hilty, Reto M, 1958Added author: Max-Planck-Institut für Immaterialgüter- und Wettbewerbsrecht
Title: Copyright collective management and digitization: the European experience
Source: Max Planck Institute for Intellectual Property and Competition Law Research
Paper. No. 13-09, 18 February 2013.
General Note: Also published in: Ruth Towse and Christian Handke (eds.), Handbook of
the Digital Creative Economy, Cheltenham: Edward Elgar, 2013.
Summary: Copyright collective management -- Europe -- decline of traditional copyright
management due to digitisation -- traditional system of collective rights management -how the system works -- limitation of right holders' and users' freedom of contract -modifications due to European case law -- move from exclusive rights to effect
remuneration -- effects of the internet and digitisation -- IFPI Simulcasting Decision (2002)
-- recommendation of the DG Market (2005) -- 2012 proposal for a Directive on Collective
Management -- current situation -- music sector -- Creative Commons licences -- OnLine
Art system -- collective management as a solution to copyright paradox.
Subject: Copyright licensing societies--Europe
Subject: Copyright--management--Europe
Subject: Internet--Europe
SNIPER No.: 2013/01124
Author: Baud, Emmanuel
Title: Creating consistency in Europe
Source: World Trademark Review. No. 43, June-July 2013, pp. 65-69.
Summary: Nice Classification of Goods and Services for the Purposes of the Registration
of Marks -- 'Class heading covers all' approach -- 'means what it says' approach -- IP
Translator case -- upcoming cases to watch -- genuine use of a trade mark in a different
form -- genuine use of Community trademarks 'in the Community'.
Subject: Trade mark use--case law--Europe
Subject: Trade mark classification--case law--Europe
SNIPER No.: 2013/01100
Author: Gómez, David
Title: Customs for IP infringement
Source: IPR Helpdesk Bulletin. No. 9, April-June 2013, pp. 3-4.
Summary: Counterfeiting -- piracy problems in the European Union -- customs action
against goods suspected of infringing intellectual property rights -- IP rights protection -Customs Detention Orders (CDO) -- on explicit request -- ex officio -- national and
community applications for a CDO -- recommendations for small-to-medium enterprises
(SME's) -- overall success of CDO depends on the active collaboration of the rights
holder.
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Subject: Customs--Europe
Subject: Intellectual property infringement--Europe
SNIPER No.: 2013/01041
Author: Lu, Jack Jiaqing
Title: Decompose and adjust patent sales prices for patent portfolio valuation
Source: Les Nouvelles. Vol. 48 No. 1, March 2013, pp. 71-79.
Summary: Patent portfolio valuations -- patent bubble -- Nortel and Google -- lack of
disclosure for public-traded companies to release prices and deal terms in patent
transactions -- data collecting and processing -- descriptive statistics -- econometric
analysis -- patent bubble, non-practicing entities (NPEs) role and patents vs. patent
applications -- model generated benchmarks, adjusted and forecasted prices and case
studies -- stock market pricing of patents and cost of patent acquisitions.
Subject: Patents--economics
Subject: Value of intellectual property
SNIPER No.: 2013/00875
Author: Rendle, Adam
Title: Defame game
Source: Intellectual Property Magazine. April 2013, pp. 68-69.
Summary: Tamiz v Google, Inc -- English Court of Appeal -- clarified Google’s
responsibility for defamatory content appearing on its Blogger.com blogging platform -after it is put on notice of the content it will arguably be liable as a publisher for that
content unless it removes the content within “a reasonable time” -- facts of the case -- the
issues -- the decision -- the implications.
Subject: Culture and entertainment industry--case law--United Kingdom
Subject: User-generated content--United Kingdom
SNIPER No.: 2013/01115
Author: Speck, Michael
Title: Defining intellectual property crime
Source: Australian Intellectual Property Journal. Vol. 23 No. 3, April 2013, pp. 187-201.
Summary: Need for definition of the term "intellectual property crime" -- broader concept
than core infringement offences found in copyright, trade mark and some other intellectual
property legislation -- proposed three part definition -- crimes against intellectual property - crimes using intellectual property -- crimes incidentally involving intellectual property -definition based on motivation of offenders and the targets of their activities -- involvement
of organised crime in copyright piracy and trade mark counterfeiting.
Subject: Intellectual property infringement
Subject: Crime
Subject: Counterfeiting
SNIPER No.: 2013/00136
Author: Crowne-Mohammed, Emir Aly
Title: Denial of tariffs on soundtracks accompanying movies and television shows
Source: Journal of Intellectual Property Law and Practice. Vol. 7 No. 12, December 2012,
p. 851-852.
Summary: Re:Sound v Motion Picture Theatre Associations of Canada, 2012 SCC 38,
Supreme Court of Canada, 12 July 2012 -- Supreme Court of Canada unanimously upheld
the denial of tariffs on soundtracks that accompany movies and television shows in
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Canada -- Canada's Copyright Act RSC 1985 -- definition of sound recording excluded
'soundtracks' Re:Sound (formerly the Neighbouring Rights Collective of Canada) -decision affirms the Supreme Court's preferred approach to statutory interpretation.
Subject: Copyright licensing societies--Canada
Subject: Fair use (Copyright)--cinematographic works--Canada
Subject: Copyright levies--Canada
SNIPER No.: 2012/01532
Author: Smolders, Walter
Added author: Quaker United Nations Office
Title: Disclosure of origin and access and benefit sharing: the special case of seeds for
food and agriculture
Source: Occasional Paper (Quaker United Nations Office). No. 17, October 2005.
Summary: Plant genetic resources for food and agriculture -- Convention on Biological
Diversity is not a suitable access and benefit sharing (ABS) system for use of plant
genetic resources in food and agriculture -- International Treaty on Plant Genetic
Resources for Food and Agriculture is the sui generis system of choice to achieve the
objectives of ABS -- sustainable use of plant genetic resources for food and agriculture -preservation of these resources -- gene banks and their use -- intellectual property for
plant growers -- IP threat and recommendations -- commercial available cultivars as
source for breeding -- disclosure of source -- plant protection on plant varieties derived
from publicly available varieties -- UPOV system -- pressure for IP rights to become
stronger, as research costs increase and technology is more sophisticated.
Subject: International Treaty on Plant Genetic Resources for Food and Agriculture (2001)
Subject: Agriculture industry--treaties
Subject: Intellectual property--agriculture industry
SNIPER No.: 2013/01067
Author: Spence, Andrew T.
Title: Discussing patents and published patent applications in the World Wide Web 2.0
Source: Intellectual Property & Technology Law Journal. Vol. 25 No. 1, January 2013, pp.
9-14.
Summary: Patent focused discussions in an internet environment -- Web 2.0 technologies
and crowd-sourcing capabilities -- peer-to-patent projects -- high profile patent
infringement lawsuits discussed on blogs -- legal questions arising from open patentfocused discussion about a patent or pending application -- open discovery and
discussion of prior art -- legal questions regarding wilful infringement, inequitable conduct
and claim construction -- challenges and pitfalls of increasing opportunities for
unmonitored and unauthorized online speech by inventors and interested parties.
Subject: User-generated content--intellectual property industry
Subject: Peer review (Intellectual property)
Subject: Internet
SNIPER No.: 2012/01530
Author: Abbott, Frederick M.
Added author: Quaker United Nations Office
Title: The Doha declaration on the TRIPS Agreement and public health and the
contradictory trend in bilateral and regional free trade agreements
Source: Occasional Paper (Quaker United Nations Office). No. 14, April 2004.
Summary: Patents and pharmaceutical regulations -- complex hierarchical relationships
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among the conflicting provisions -- potential obstacles to the supply of low priced
medicines -- contradictory trends in public health negotiations -- recent developments -Article 15.10 measures related to certain regulated products -- additional obligations under
CAFTA -- intersection of data protection and patents -- non-violation causes of action Australia and Morocco -- overriding TRIPS exceptions -- data protection and market
exclusivity revisited -- contravening the letter and spirit of the Doha declaration.
Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994)
Subject: Patents--pharmaceutical industry
Subject: Intellectual property rights--developing countries
SNIPER No.: 2013/01008
Author: Reed, David
Title: Don't let national security snag your patent application
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 2, February 2013, pp. 3335.
Summary: Management of innovation and IP derived from global R&D operations -requires IP manager/attorney to be familiar with relevant national laws governing the
protection of the invention -- consequences of failing to comply -- national security
requirements of India, China and the Southeast Asia region -- result of influx of R&D
activities from multi-national companies -- national security provisions -- advised to work
closely with local qualified patent agents.
Subject: Intellectual property management
Subject: Industrial research and development
SNIPER No.: 2013/00692
Author: Quintais, João Pedro
Title: Dr Strangelaw, or how Portugal learned to stop worrying and love P2P
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 3, March 2013, pp.
193-196.
Summary: Criminal Process 6135/11.7TDLSB, Decision by the Department of
Investigation and Penal Action of Lisbon, 20 July 2012, Opinion from the Prosecutor
General's Office, Proc. 411/2006, L 115, on 'Piracy on the Internet', 4 July 2011 -- recent
decision by a Public Prosecutor in a criminal case in Portugal, based on an Opinion by the
Prosecutor General's Office -- considers download acts by peer-to-peer (P2P) users to be
covered by the private use limitation, raises the possibility that acts of upload are also
covered by it and considers IP addresses insufficient evidence upon which to prosecute
users.
Subject: Copyright infringement--information technology industry--Portugal
SNIPER No.: 2013/01014
Author: Mundkur, Kavita D.
Title: Dressing up your wares: increasing protection to trade dress in India
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 2, February 2013, pp. 43.
Summary: Trade dress -- consumers increasingly identifying products from their
appearance, design, shape -- distinction between trade mark and trade dress is blurring -term trade dress not defined under the Indian Trade Marks Act 1999 -- Gorbatschow
Wodka v. John Distilleries -- deceptive variation of the shape of vodka bottles -- Whirlpool
of India v. Videocon Industries -- design of the washing machine -- granting protection to
shape of goods in India
Subject: Trade dress--case law--India
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Subject: Trade mark infringement--India
SNIPER No.: 2013/01135
Author: Lázaro, Ignacio
Title: Driving jurisdictional consistency
Source: World Trademark Review. No. 43, June-July 2013, p. 110.
Summary: Eurasian Economic Commission -- draft Agreement on Trademarks, Service
Marks and Appellations of Origin in the Territory of the Single Economic Space (SES)
between the Customs Union members -- Belarus, Kazakhstan and the Russia Customs
Union -- objective of the draft agreement -- agreement will govern the registration and
protection of trade marks, service marks and appellations of origin -- possible to
register collective marks -- certification and guarantee marks are excluded from the
agreement -- types of sign that are entitled to protection -- Russian translation -- office
which receives the application will be in charge of the formal examination -- separate
substantive examination conducted in each Customs Union member state -- trade mark
register -- national courts will resolve any dispute concerning the infringement of SES
trade marks -- regional exhaustion of rights -- advantages of single registration.
Subject: Harmonisation of laws
Subject: Trade mark registration
SNIPER No.: 2013/01011
Author: Mirandah, Gladys
Title: Effective criminal enforcement of IP rights
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 2, February 2013, pp. 40.
Summary: Unauthorised use of trade marks -- protection does not end with registration -valid rights -- protection against counterfeiters -- criminal enforcement measures in
Singapore -- four-step approach to enforcement -- field investigation/market survey to
identify sources of counterfeit goods -- evaluation or comparison of the differences
between genuine and counterfeit goods -- warrant authorising a raid -- infringer may
approach proprietor for out-of-court settlement -- government's commitment to IP rights in
Singapore.
Subject: Intellectual property infringement--Singapore
Subject: Intellectual property enforcement--Singapore
Subject: Counterfeiting--Singapore
SNIPER No.: 2012/02863
Author: Correa, Carlos María
Title: Efforts to raise the bar in patent examination need to be supported
Source: IIC: International Review of Intellectual Property and Competition Law. Vol. 43
No. 7, 2012, pp. 747-750.
Summary: Proliferation of patents -- evergreening -- patent thickets -- prevent legitimate
competition -- stifle innovation -- patent proliferation may be caused by the way in which
patent offices interpret and apply the patentability requirements -- inventive-step standard
not being met, particularly in the pharmaceutical field -- rigorous criteria need to be
stipulated to assess novelty, inventive step and industrial applicability -- initiatives taken at
national level to address problems created by low patentability standards -- "Raising the
Bar" Bill in Australia -- "Raising the Bar" policy at the EPO -- problems with evergreening -some countries focused reforms on patent applications relating to pharmaceuticals -Brazilian Health Agency (ANVISA) role in approving patents on pharmaceuticals --Sec
5(d) in Indian patent law to limit evergreening -- reforms in Philippines and Argentina --
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Trans-Pacific Partnership provision art. 8.1 designed to neutralize these reforms -author's view that raising the bar is the right approach.
Subject: Patent examination--reform
Subject: Patentability--reform
SNIPER No.: 2013/00425
Author: Chan, Johnny
Title: Ella Cheong: wonder woman
Source: Asia IP: Protecting your Intellectual Assets. Vol. 4 No. 10, November 2012, pp.
54-56.
Summary: Interview with Ella Cheong, IP lawyer in Hong Kong and Singapore -- how she
earned numerous IP awards -- IP cases and challenges -- every IP case is challenging in
different ways -- gathering necessary information -- sustaining a law firm -- quality lawyers
are keys to growing law firms -- managing firms in different countries --IP landscapes in
Singapore and Hong Kong -- Cheong's IP future.
Subject: Cheong, Ella--interviews
Subject: Lawyers--intellectual property industry
Subject: Intellectual property industry--Hong Kong
Subject: Intellectual property industry--Singapore
SNIPER No.: 2013/01109
Author: Arnold, Richard
Title: English unfair competition law
Source: IIC: International Review of Intellectual Property and Competition Law. Vol. 44
No. 1, 2013, pp. 63-78.
General Note: This article is based on lectures delivered at the German Judicial
Academy, Wustrau on 22 September 2010 and the University of Bayreuth on 6 June
2012.
Summary: Unfair competition law -- economic injury to businesses -- traditional view that
England has no law of unfair competition -- Article 10 of the Paris Convention -- Article 6
of the Rome II Regulation -- consumer protection law -- Europeanised -- trade mark
infringement -- 02 Holdings Ltd v. Hutchinson 3G UK Ltd -- passing off -- Reckitt & Colman
Products Ltd v Borden Inc -- malicious falsehood -- breach of confidence -- Coco v. A.N.
Clark (Engineers) Ltd.
Subject: Competition law--United Kingdom
SNIPER No.: 2013/01185
Author: Harhoff, Dietmar
Title: Erratum to "Citations, family size, opposition and the value of patent rights"
[Research Policy 32 (2003) 1343-1363]
Source: Research policy. Vol. 33 No. 2, March 2004, pp. 363-364.
General Note: Original article "Citations, family size, opposition and value of patent
rights". See also 2013/01186.
Summary: Corrected equations and reference list of original article.
Subject: Value of intellectual property--economics
Subject: Patents--analysis
SNIPER No.: 2013/01133
Author: Meiring, Wayne
Title: Ethiopia welcomes long-awaited new trademark law
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Source: World Trademark Review. No. 43, June-July 2013, pp. 100-101.
Summary: Regulation for the Ethiopian Trademark Registration and Protection
Proclamation -- making service marks registrable -- filing requirements -- recognition of
well-known trade marks -- priority applications -- examination -- publication and opposition
-- enforcement – customs.
Subject: Trade marks--reform--Ethiopia
Subject: Trade marks--law and legislation--Ethiopia
SNIPER No.: 2013/01059
Author: Woolman, Stu
Title: Evidence of patent thickets in complex biopharmaceutical technologies
Source: IDEA: the Intellectual Property Law Review. Vol. 53 No. 1, 2013, pp. 1-38.
Summary: Patenting and licensing characteristics of the biopharmaceutical industry -analyses the statistical distribution of patent thickets in the 200 top selling drugs in the
United States -- definition of a patent thicket -- weak and strong patent thickets -- theory
development and hypothesis -- thicket effect on the probability of a drugs'
commercialisation -- strong patent thickets in complex biopharmaceutical technologies -regulatory regime to encourage production of more commercially viable and socially
desirable drugs that rely upon complex biopharmaceutical technologies.
Subject: Patent licensing--pharmaceutical industry--United States
Subject: Patent licensing--biotechnology industry--United States
SNIPER No.: 2013/00688
Author: Feros, Anna
Title: Extending the UK Bolar exception to innovators?
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 3, March 2013, pp.
187-189.
Summary: Consultation for amendment to the Patents Act 1977 (UK) -- seeking fairer
system by allowing clinical and field trials for new drugs to be carried out without risking
being sued for patent infringement -- The Research and Bolar Exceptions -- UK
Intellectual Property Office (UKIPO) launched formal consultation -- amending the
research and Bolar exception as contained in s 60(5) of the Patents Act 1977 to include
use of innovative drugs in clinical and field trials -- extending the exception a benefit for
some innovators being able to run some of their trials earlier -- poses possibly unfair
advantage for generics to obtain a cost and timing advantage.
Subject: Experimental use (Patents)--United Kingdom
Subject: Pharmaceutical industry
Subject: Patent infringement--law and legislation--United Kingdom
SNIPER No.: 2013/01193
Author: Barlow, Vaughan
Title: Federal Court of Australia decides in favour of Myriad
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of
Patent Agents. Vol. 42 No. 3, March 2013, pp. 122-123.
Summary: Requirements for patentable subject-matter in Australia -- Cancer Voices
Australia v Myriad Genetics Inc [2013] FCA 65 (15 February 2013) -- confirms isolated
genes and other biological materials -- no distinction made between different biological
materials on the basis of inherent "informational" characteristics -- held that no
requirement for any physical/chemical change to have occurred during the process of
isolation -- experimental use defence enacted in the Intellectual Property Laws
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Amendment (Raising the Bar) Act 2012.
Subject: Genes--patentability--Australia
Subject: Patentability--case law--Australia
SNIPER No.: 2013/00989
Author: Ge, Qing
Title: Four cases and their lessons for utility models
Source: Managing Intellectual Property. China IP Focus, 2013, pp. 46-50.
Summary: In China utility model (UM) patents are not subject to substantial examination
before grant -- characteristics of inventiveness judgments of UM patents -- case studies -differences between judgments of UM and invention patents.
Subject: Minor patents--China
Subject: Patent validity--case law--China
Subject: Inventive step--China
SNIPER No.: 2013/01044
Author: Rimmer, Matthew
Title: Franklin barley: patent law and plant breeders' rights
Source: Murdoch University Electronic Journal of Law. Vol. 10, no. 4, December 2003,
pp. 2-45.
Summary: Relationship between patent law and plant breeder's rights in light of modern
developments in biotechnology -- High Court of Australia case Grain Pool of Western
Australia v the Commonwealth -- Franklin barley -- Supreme Court of the United States
decision JEM Ag Supply Inc v Pioneer Hi-Bred International Inc -- utility patents and hybrid
seeds -- Supreme Court of Canada case Harvard College v the Commissioner of Patents - transgenic animal oncomouse -- implications for appeal from Federal Court case Percy
Schmeiser v Monsanto.
Subject: Biotechnology industry--case law--Australia
Subject: Plant breeder's rights--case law--Australia
SNIPER No.: 2013/01108
Author: Schober, Natalie
Title: The function and shape as an absolute ground for refusal
Source: IIC: International Review of Intellectual Property and Competition Law. Vol. 44
No. 1, 2013, pp. 35-62.
Summary: Trade mark law -- European conception of the functionality doctrine -- differing
approaches adopted by the European Court of Justice and Advocate General in ECJ Lego
decision -- classification of so-called hybrid shapes -- relevance of alternative shapes -findings of U.S. courts -- Traffix decision -- U.S. functionality doctrine -- European practice
-- grounds for refusal -- de facto effects on functionality on trade mark registration.
Subject: Shape marks--registrability--Europe
Subject: Trade dress--case law--United States
SNIPER No.: 2013/00685
Author: Marino, Grégoire
Title: The future of user-generated content is now
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 3, March 2013, pp.
183.
Summary: European Commission debate on copyright -- issues with the current copyright
framework -- modernise European copyright framework -- adapt to the digital economy
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user-generated content -- confusing concept which fails to distinguish original content from
derivative works -- point of disagreement between rights holders, providers of online
services and their users -- provision of the e-Commerce Directive, loosely based on similar
provisions in the US Digital Millennium Copyright Act -- limits liability of internet service
providers for hosting infringing content -- working towards a balanced copyright framework
-- collaboration of all stakeholders.
Subject: User-generated content
Subject: Electronic copyright--Europe
Subject: Carriage service providers--liability--Europe
SNIPER No.: 2013/00878
Author: Symons, Laura
Title: A game of two halves
Source: Intellectual Property Magazine. April 2013, p. 74.
Summary: Football Dataco Ltd and Others v Sportradar GmbH and Another -- England
and Wales Court of Appeal -- clarified criteria for database protection -- explored the
circumstances in which online service providers may be liable for their users'
infringements -- law -- subsistence -- infringement.
Subject: Database rights--case law--United Kingdom
Subject: Intellectual property infringement--liability
SNIPER No.: 2013/01062
Author: Eichner, Andrew W.
Title: Game over, insert coin to continue: entering a new era of video game intellectual
property enforcement
Source: IDEA: the Intellectual Property Law Review. Vol. 53 No. 1, 2013, pp. 101-134.
Summary: Enforcement of intellectual property rights for video game companies -- Ninth
Circuit decision Vernor v. Autodesk, Inc. -- changing video game legal doctrine -- MDY
Indus., LLC v. Blizzard Entm't, Inc -- concept that a person does not own purchased
software is entirely novel and cuts against the traditional principles associated with the
first-sale doctrine -- principle that a person who purchases video game software is only a
licensee instead of an owner of the software -- implications for the used video game
market -- enforcement measures -- distribution tactics and technological developments -online passes -- digital distribution platforms -- next generation video game hardware -increasing enforcement power in the hands of the game industry.
Subject: Intellectual property enforcement--information technology industry--United States
Subject: Multimedia works
SNIPER No.: 2013/00700
Author: Lawrance, Sophie
Title: The General Court's 2012 Microsoft judgment: 'reasonable' fines and ‘reasonable’
licence fees
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 3, March 2013, pp.
236-240.
Summary: Competition law and intellectual property -- Article 102 of the Treaty on the
Functioning of the European Union (TFEU) prohibits any abuse of a dominant position by
one or more undertakings -- abuse has an effect on trade between EU Member States -Microsoft in the past been held to occupy a position of dominance in the market for
computer operating systems -- both the US Department of Justice and the European
Commission found that Microsoft violated antitrust laws -- main abuse was Microsoft’s
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refusal to provide certain interoperability information that would enable third parties to
develop products compatible with its operating systems -- open and interoperable models
are seen to stimulate competition by enabling more players to enter the market -- The
Commission obliged Microsoft to make the interface information available on ‘reasonable
terms’ -- considers the General Court’s interpretation of the obligation imposed on
Microsoft and the broader implications for the IT sector -- recent appeal to the European
General Court -- decision lacking in clarity -- what is 'reasonable'.
Subject: Competition law--information technology industry--Europe
Subject: Intellectual property law--information technology industry--Europe
SNIPER No.: 2013/00702
Title: German request for a preliminary ruling asking whether or not the obligation to
identify press publications complies with the Directive on Unfair Commercial Practices:
“GOOD NEWS": German Federal Court of Justice
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 3, March 2013, pp.
245-248.
Summary: Press law -- Decision of 19 July 2012, Case No I ZR 2/11 -- interpretation of
the Unfair Commercial Practices Directive -- do Article 7(2) and No 11 in Annex I to Article
5(5), in conjunction with Articles 4 and 3(5), of Directive 2005/29/EC on unfair commercial
practices preclude the application of a national provision -- intended not only to protect
consumers against misleading practices -- protect the independence of the press -- to
contrast to Article 7(2) and No 11 in Annex I to Article 5(5) of the Directive -- prohibits any
publication for remuneration, irrespective of the purpose -- unless that publication is
identified by the use of the term 'advertisement' -- already evident from the arrangement
and layout of the publication that it is an advertisement.
Subject: Competition law--Germany
Subject: Marketing--culture and entertainment industry—Germany
SNIPER No.: 2013/01132
Author: Hennessy, Erin S.
Title: Get your head in the cloud
Source: World Trademark Review. No. 43, June-July 2013, pp. 97-99.
Summary: Cloud computing -- advantages of moving to the cloud -- trade mark concerns
-- acquiring trade mark rights 'to the' cloud -- licensing considerations and maintaining
trade mark rights -- enforcing trade mark rights in the cloud -- issues for cloud-based
service providers.
Subject: Computing
Subject: Trade mark registration
SNIPER No.: 2013/01125
Author: Webster, Charles E.
Title: Getting over confusion
Source: World Trademark Review. No. 43, June-July 2013, pp. 70-71.
Summary: South Africa's Supreme Court of Appeal -- dispute between The Gap Inc and
Salt of the Earth Creations -- proving genuine use -- rights holder bears the burden of
proving use during the relevant period -- New Balance -- likelihood of confusion case -comparison between the registered trade marks Zetomax and Zemax -- Adidas.
Subject: Confusing similarity--case law--South Africa
Subject: Trade mark use--case law--South Africa
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SNIPER No.: 2013/01106
Author: Barber, William G.
Title: Global patent harmonization: an idea whose time has come
Source: IIC: International Review of Intellectual Property and Competition Law. Vol. 44
No. 1, 2013, pp. 1-3.
Summary: Reforms to US patent laws -- domestic improvements under the America
Invents Act (AIA) -- revised to provide a first inventor-to file system -- enhanced prior use
defence -- post-grant and inter partes review proceedings -- procedures for pre-issuance
submissions of prior art by third parties -- UPSPTO issuing administrative rules to
implement the legislation -- extensive input from stakeholders-- improved fee-setting
authority -- moving towards a global market and patent harmonisation -- differences
remain -- lack of a grace period in some industrialised countries apart from the US -international patent harmonisation.
Subject: United States. Leahy-Smith America Invents Act
Subject: Patent systems--reform--United States
Subject: Harmonisation of laws--United States
SNIPER No.: 2013/00140
Author: Moss, Gary
Title: Golden Eye v Telefonica: Media CAT revisited
Source: Journal of Intellectual Property Law and Practice. Vol. 7 No. 12, December 2012,
pp. 872-878.
Summary: Golden Eye and 14 other companies sought Norwich Pharmacal orders
against internet service provider Telefonica -- basis of objection by High Court (UK) -- did
an applicant for a Norwich Pharmacal order have a
duty of full and frank disclosure -- had the claimants established that they were the
victims of actionable wrongs -- did the claimants have a genuine intention to take action to
redress those wrongs -- was the order being sought proportionate and did it contain
adequate protections -- Media CAT v Adams, decided in the Patents Country Court -- how
the Norwich Pharmacal jurisdiction might be open to abuse in the context of alleged
infringement of copyrighted works -- peer-to-peer (P2P) file sharing over the internet.
Subject: Copyright infringement--law and legislation--United Kingdom
Subject: Carriage service providers--United Kingdom
Subject: Electronic copyright--case law--United Kingdom
SNIPER No.: 2013/00876
Author: Godfrey, Elizabeth
Title: Google has a way with AdWords
Source: Intellectual Property Magazine. April 2013, pp. 70-71.
Summary: High Court of Australia -- Google Inc v Australian Competition and Consumer
Commission -- by publishing or displaying sponsored link advertisements, Google
engaged in misleading and deceptive conduct in contravention of Australia's consumer
protection laws -- Google was held not liable -- earlier decisions -- the High Court -- the
impact of the High Court's decision -- key points.
Subject: Keyword advertising--case law--Australia
Subject: Marketing--case law--Australia
SNIPER No.: 2013/00697
Author: Wadlow, Christopher
Title: 'Hamlet without the prince': can the Unitary Patent Regulation strut its stuff without
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Articles 6-8?
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 3, March 2013, pp.
207-212.
Summary: Proposed EU Unitary Patent -- effective across whole of European Union
(except Spain and Italy) -- infringement being adjudicated in a single Unified Patent Court
-- near pan-European jurisdiction -- excessive role of the Court of Justice of the European
Union (CJEU) in the day to day operation of the Unified Patent Court -- EU Council
proposed to remove Articles 6-8 of the draft Regulation -- effects of the Unitary Patent in
terms of direct and indirect infringement and limitations on the rights conferred -background to the Unitary Patent regulation -- question whether a Regulation without
these articles would be valid and effective -- three mechanisms tentatively proposed by
which the Unitary Patent might be given effect.
Subject: Regional patents--Europe
Subject: Patent systems--harmonisation--Europe
Subject: Patents--reform--Europe
SNIPER No.: 2013/00691
Author: Jasserand, Catherine
Title: Hosting providers' liability: Cour de cassation puts an end to the notice and stay
down rule
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 3, March 2013, pp.
192-193.
Summary: Court de cassation issued three decisions relating to disputes between rights
holders and Google concerning the possible obligation of online intermediaries to monitor
subsequent publications of infringing materials -- Google & Aufeminin.com v Mr X -concerned a singer against Google and an online magazine for making available an
unauthorized reproduction of a picture representing him -- Les Dissimulateurs (Cour de
cassation, 1e`re ch civile, Arre't 828, 12 July 2012, 11-13.666) and l'Affaire Clearstream
(Cour de cassation, 1e`re ch civile, Arre't 831, 12 July 2012, 11-13.669) -- re-indexation of
copies of movies that had also been previously notified as illegal -- decisions comply with
Scarlet v SABAM (C-70/10, 14 November 2011) of the Court of Justice of the European
Union -- question arises under French law whether copyright holders could rely on a
different provision -- ask a court to issue general filtering orders in order to impose general
monitoring obligations to online providers.
Subject: Copyright infringement--liability--France
Subject: Carriage service providers--France
Subject: Copyright infringement--communication services industry--France
SNIPER No.: 2013/01161
Author: Ki, Andrew
Title: How do I stop goods in transit?
Source: Managing Intellectual Property. No. 228, April 2013, pp. 52-55.
Summary: Goods in transit through a country cannot be seized for intellectual property
(IP) infringement under most legal systems -- extent to which Customs authorities accept
the statement that the goods are in transit, and whether they investigate any irregularities,
varies between countries -- in the Netherlands, the procedure has been coloured by
rulings from the Court of Justice of the European Union in the Nokia/Philips cases -- in
Hong Kong most goods are seized over land from China -- transit rules are less of a
problem -- less protection for IP owners in Uruguay and the United States -- United States
has an efficient Customs programme for registering IP with officials -- worth checking
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whether goods are being sold electronically into the US -- this puts them into the stream of
internal US commerce.
Subject: Customs
Subject: International trade
SNIPER No.: 2013/00986
Author: Lam, Cedric
Title: How employee inventors are protected
Source: Managing Intellectual Property. China IP Focus, 2013, pp. 30-34.
Summary: China revamping the legal framework for protecting the rights and interest of
employee-inventors -- the current regime -- reward and remuneration standards -- latest
administrative opinions -- draft service invention regulations -- outlook.
Subject: Patent entitlement--China
Subject: Intellectual property law--reform--China
SNIPER No.: 2013/01167
Author: Crompton, Simon
Title: How the PCC became a global player
Source: Managing Intellectual Property. No. 228, April 2013, pp. 56-64.
Summary: London's Patents County Court (PCC) -- broad scope of a small court -- costs
cap -- small disputes as well as some very substantial cases -- how intellectual property
(IP) owners should approach the court -- PCC as an alternative to venue to Germany or
the Netherlands -- choosing a lawyer -- an uncertain future -- Colin Birss talks about
access to justice, demoralised IP owners and how the PCC was brought back from the
brink -- a selection of the PCC's recent rulings -- keeping issues under control is emerging
as a key objective of the judge in case management -- maximum trial length of two days -fifty thousand pound costs cap.
Subject: Patent litigation--United Kingdom
Subject: Legal jurisdiction--United Kingdom
SNIPER No.: 2013/01013
Author: Chiu, Alan C. W.
Title: How the US's new anti-IT theft approach affects Asia's businesses
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 2, February 2013, pp. 42.
Summary: Use of unauthorised software in business -- cost advantage over law-abiding
businesses that pay for licensed IT -- software anti-piracy trend -- Thai company fined in
Massachusetts -- seafood processor Narong Seafood in Thailand undercutting
Massachusetts food processors by using pirated software -- Thai company exported 70%
of its products to the U.S. -- engaged in an unfair business practice -- civil penalty -- how
Asian businesses avoid similar risks -- liability exposure -- competition law.
Subject: Competition law--United States
Subject: Copyright infringement--United States
SNIPER No.: 2013/01184
Author: Lanjouw, Jean Olson.
Title: How to count patents and value intellectual property: the use of patent renewal and
application data
Source: Journal of Industrial Economics. Vol. 46 No. 4, December 1998, pp. 405-432.
Summary: Value of patent protection -- patent counts imperfect measurement of
innovative output -- additional data such as the number of years a patent renewed,
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number of countries in which protection for the same invention is sought -- used to
improve on counts in studies that require a measure of the extent of innovation -- models
of patent application and renewal processes -- weighted patent counts as a measure of
innovation -- value of patent protection and IPR policy.
Subject: Patents--economics
Subject: Value of intellectual property--analysis
SNIPER No.: 2013/01157
Author: Colice, Max
Title: How to use a patent prosecution highway
Source: Managing Intellectual Property. No. 228, April 2013, pp. 36-38.
Summary: First patent prosecution highway (PPH) was started between the United States
and Japan in 2006 -- today the United States Patent and Trademark Office (USPTO) has
programmes with almost every major intellectual property office in the world -- other forms
of accelerated examination are quicker -- advantages of PPH -- grant rate and lower costs
-- simple system -- important to handle the claim correspondence correctly -- be aware of
slight variations between the various programmes.
Subject: Patent examination
Subject: Patent processing
SNIPER No.: 2013/01040
Author: Keller, Gary
Title: If the sky were the limit, what would you do in technology transfer?
Source: Les Nouvelles. Vol. 48 No. 1, March 2013, pp. 66-70.
Summary: Federal Laboratory Consortium for Technology Transfer (FLC) -- network of
laboratories and parent agencies -- provides a forum to develop strategies and explore
ways to link laboratory technologies and expertise within the marketplace -- key areas
where opportunities for change -- culture -- elevation and integration of mission -marketing communications -- process -- payment and transactions -- policy and
agreements -- documentation systems -- education -- entrepreneurship and
commercialisation -- funding -- facilities -- commercialisation networks.
Subject: Technology transfer
Subject: Innovation (Technological)
Subject: Business collaboration
SNIPER No.: 2013/00990
Author: Wu, Xiaoying
Title: The importance of thorough searches
Source: Managing Intellectual Property. China IP Focus, 2013, pp. 52-56.
Summary: Patentability requirement of inventive step -- underlying principle for this
requirement -- assessment for the requirement varies from jurisdiction to jurisdiction -legal justification in China -- opinions from the Chinese Patent Office, Reexamination
Board and people's courts -- an invention should be disclosed sufficiently with respect to
technical effects in order to argue against non-inventiveness -- important for patent
practitioners to conduct thorough prior art searches -- provide enough examples and data
in the application description -- not rely on post-filing evidence to supplement an alleged
inventive invention.
Subject: Inventive step--China
Subject: Patent applications--China
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SNIPER No.: 2013/00877
Author: O'Brien, Claire
Title: In deep water
Source: Intellectual Property Magazine. April 2013, pp. 72-73.
Summary: Kohler Mira Ltd v Bristan Group Ltd -- Patents County Court -- UK
unregistered design right (UK UDR) indirect copying -- community registered designs,
interpretation of dotted lines in design registrations.
Subject: Industrial design infringement--case law--United Kingdom
Subject: Industrial design registration--United Kingdom
SNIPER No.: 2013/00138
Author: Narin, Francis
Title: The increasing linkage between U.S. technology and public science
Source: Research Policy. Vol. 26 No. 3, 1997, pp. 317-330.
Summary: Arguing case for governmental support of science -- need for detailed and
systematic examination of contribution of public science to industrial technology -methodology of study -- tracing rapidly growing citation linkage between U.S patents and
scientific research papers -- analysis of non-patent references cited on front pages of US
patents issued in 1987-1988 and 1993-1994 -- found 73% of papers cited by U.S industry
patents are public science, authored at academic, governmental and other public
institutions -- 27% are authored by industrial scientists -- each country's inventors prefer to
cite papers authored in their own country -- results show that public science plays
essential role in supporting U.S. industry -- driving force behind high technology.
Subject: Science and research industry--analysis
Subject: Public policy--science and research industry
SNIPER No.: 2013/00869
Author: Mottley, Darrell G.
Title: Industrial strength
Source: Intellectual Property Magazine. April 2013, pp. 54-55.
Summary: Patent Law Treaties (PLT) Implementation Act of 2012 -- The Hague
Agreement Implementation section of the act -- introduction to the Hague system -- United
States enacts legislation to join Hague system -- new law offers provisional rights -- new
law incorporates America Invents Act changes -- no automatic grant of a design patent -new law continues focus on single design inventions -- US Patent and Trademark Office
(USPTO) should address information disclosure requirements -- USPTO should address
inventor oath or declarations -- what happens now?
Subject: Industrial design rights--reform--United States
Subject: Industrial designs--law and legislation--United States
SNIPER No.: 2013/01039
Author: Chaudhary, Nitin
Title: Innovation for growth: the challenge of sustained growth and the increasingly
important role of innovation enablers
Source: Les Nouvelles. Vol. 48 No. 1, March 2013, pp. 60-65.
Summary: Economic success of organisations -- who is responsible for innovation within
an organisation -- limitations of internal R&D -- role of innovation enablers -- R&D,
marketing and competitive intelligence -- patent department and licensing division often
under-represented in organisation -- challenge of sustained innovation -- Apple Inc
innovation approach -- influence of external factors -- technology surveillance -- defining
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boundaries by creating an ecosystem -- tracking relevant patents within the root and
parallel ecosystems.
Subject: Economics
Subject: Value of intellectual property
Subject: Industrial research and development
SNIPER No.: 2013/01149
Author: Berman, Charles
Title: Innovation patents and their importance as a business tool
Source: Mining & Technology Australia. No. 6, 2013, pp. 44-45.
Summary: Innovation patents in Australia -- should be considered as important part of
business's commercial strategy -- mechanism for obtaining or maintaining competitive
advantage -- increasingly competitive resources sector -- technologies and techniques
increasingly complex -- importance of IP protection, particularly innovation patents, as
business tool -- background to innovation patent system -- innovative step -- benefits of
innovation patent -- major competitive advantage to business in having innovation patents
covering its important technology.
Subject: Minor patents--Australia
Subject: Intellectual property management--mining industry--Australia
SNIPER No.: 2013/01155
Author: Mooney, Kevin
Title: An insider's view of the UPC
Source: Managing Intellectual Property. No. 228, April 2013, p. 29.
Summary: Preparatory committee is responsible for all practical arrangements -- setting
up local or regional divisions of the Unified Patents Court (UPC) -- concern that some
signatory states will struggle to select suitable judges -- location of the Court of Appeal in
Luxembourg -- major fear for some users is that bifurcation will become widespread in the
UPC -- sectors of industry deciding to opt out of the Agreement.
Subject: Patent litigation--procedure--Europe
Subject: Legal jurisdiction--Europe
SNIPER No.: 2013/01189
Author: King, Kelvin
Title: Intangible assets and property evaluation
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of
Patent Agents. Vol. 42 No. 2, February 2013, pp. 113.
Summary: Commercial activity intangibles -- value contribution -- Royal Institution of
Chartered Surveyors (RICS) Red Book -- benchmark for real estate valuations -- addition
of intangible asset and business valuation guidance notes -- set precedent -- mandatory
rules -- best practice for valuers.
Subject: Brand management
Subject: Value of intellectual property
SNIPER No.: 2013/00930
Author: Masiakowski, Piotr
Title: Integration of software tools in patent analysis
Source: World Patent Information. Vol. 35 No. 2 June 2013, pp. 97-104.
Summary: Techniques of integration of patent analysis software tools -- advantages and
pitfalls of combining multiple software resources in a large patent landscaping project --
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use of custom-configured patent software integration tool -- text mining -- case study
relating to antibody-drug conjugate (ADC) therapeutics.
Subject: Patents--analysis
SNIPER No.: 2012/01535
Author: Correa, Carlos María
Added author: Quaker United Nations Office
Title: Intellectual property and biodiversity: friend of foe?
Source: Occasional Paper (Quaker United Nations Office). No. 20, September 14, 2011
General Note: Report of a Panel Discussion, 14 September 2011.
Summary: Importance of biodiversity -- policy context of genetic resources -- IP on living
resources, plant varieties -- discovering or isolating a gene can be considered 'innovation'
under US patent law -- traditional knowledge (TK) protected through the application of IP
principles prior informed consent -- IP and the Convention on Biological Diversity -- CBDs
2010 Nagoya Protocol on Access and Benefit Sharing -- seen as a way of achieving the
third objective of the CBD (equitable sharing of benefits arising from the use of genetic
resources).
Subject: Convention on Biological Diversity (1992)
Subject: Biodiversity
Subject: Benefit sharing agreements
SNIPER No.: 2013/01102
Author: D'Erme, Roberto
Title: Intellectual property commercialisation highlights
Source: IPR Helpdesk Bulletin. No. 9, April-June 2013, pp. 7-8.
Summary: Technology transfer from research organisations (ROs) to the business sector
-- IP commercialisation practices -- ownership of IP -- IP evaluation -- market analysis -- IP
enforcement -- forms of IP commercialisation -- internal product development -- licence -assignment -- spin-off company -- joint venture -- risk management.
Subject: Intellectual property management
Subject: Business collaboration
SNIPER No.: 2013/01068
Author: Williams, Heidi L.
Title: Intellectual property rights and innovation: evidence from the human genome?
Source: Journal of Political Economy. Vol. 121 No. 1, February 2013, pp. 1-27.
Summary: Whether IP rights on existing technologies hinder subsequent innovation -use of data on sequencing of the human genome by the public Human Genome Project
and private firm Celera -- estimate of impact of Celera's gene-level IP on subsequent
innovation -- finds evidence that Celera's IP led to 20-30 percent reductions in subsequent
scientific research and product development -- suggests Celera's short-term IP had
persistent negative effects on subsequent innovation relative to a counterfactual of Celera
genes having always been in the public domain.
Subject: Human genome
Subject: Innovation (Technological)
SNIPER No.: 2013/00968
Author: Leonard, Peter G.
Title: Internet intermediary liability: a landmark decision by the High Court of Australia in
Google Inc v ACCC
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Source: Internet Law Bulletin. Vol. 15 No. 9, February 2013, p. 158-161.
Summary: Liability of internet intermediaries under the misleading and deceptive conduct
provision of the Australian Consumer Law -- Australian Competition and Consumer
Commission (ACCC) expansive view -- AdWords -- presentation of "sponsored links"
being misleading or deceptive -- case relevant not only to search engine operators -directly relevant to any Australian business that allows postings by third parties, or other
user-generated content -- acceptable use policies -- appropriate express exclusions -demonstrable systems for addressing misleading or deceptive statements.
Subject: Carriage service providers--liability--Australia
Subject: Trade mark infringement--case law--Australia
Subject: Keyword advertising--case law--Australia
SNIPER No.: 2013/01212
Author: Brinn, Michael W.
Title: Investigation of forward citation count as a patent analysis method
Source: Proceedings of the 2003 IEEE Systems and Information Engineering Design
Symposium. Charlottesville, VA: IEEE, 2003. pp. 1-6.
Summary: Patent citation count theory -- use as patent valuation technique -- evaluation
of validity of theory that patents with higher forward citation counts have greater economic
value relative to other patents -- three hypotheses examining relationship of forward
citations with other aspects of patents -- relationship between patent's forward citation
count and average number of forward citations for patents in similar areas -- size of the
patent's portfolio -- patent's second generation forward citation counts -- results
inconclusive -- evidence that use of forward citations may be problematic.
Subject: Value of intellectual property
Subject: Patents--analysis
SNIPER No.: 2013/00942
Author: Lloyd, Mike
Title: IP: the new black?: some IP trends in the fashion industry
Source: Australian Intellectual Property Law Bulletin. Vol. 25 No. 8, April 2013, pp. 154161.
Summary: Copying of fashion designs -- protection of copyright -- trends in trade mark
protection in the fashion industry -- trends in filing of registered design protection -- recent
and notable litigation in the fashion industry -- US litigation with implications in Australia.
Subject: Fashion and design industry
Subject: Copyright owners' rights
Subject: Trade mark owners' rights
Subject: Copyright infringement--case law
SNIPER No.: 2013/01192
Author: Grassie, Gill
Title: Is a computer language a copyright work?
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of
Patent Agents. Vol. 42 No. 3, March 2013, pp. 119-121.
Summary: No copyright in the functional aspects of computer programs -- High Court
decision in SAS Institute Inc v World Programming Limited -- remains uncertainty in the
application of the principle and the precise line in practice between what is functional and
what is not protectable -- competition encourages overall -- beneficial for the end
consumer of these products -- may have had an adverse effect on innovation in the
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software and computer games industries.
Subject: Copyright owners' rights--information technology industry
Subject: Copyright infringement--case law--Europe
Subject: Intellectual property law--Europe
SNIPER No.: 2013/01126
Author: Velasco, Otávio Saraiva Padilha
Title: Is the tide turning for trade dress decisions in Brazil?
Source: World Trademark Review. No. 43, June-July 2013, pp. 73-75.
Summary: Arguments presented by infringers, after imitating the trade dress of
competitors -- generic, necessary, common, vulgar or simply descriptive signs -- colours
and names -- different word marks -- case law -- Nestlé Brasil Ltda v CW Indústria e
Comércio de Gelo e Bebidas Ltda Me -- Bagley Alimentos do Brasil Ltda v CIPA Indústria
de Produtos Alimentares -- Nestlé Brasil Ltda v Cooperativa Central dos Produtores
Rurais de Minas Gerais Ltda -- Companhia de Bebidas das Américas (AMBEV) v
Cervejaria Petrópolis -- Nestlé Group v Noblan Industria de Alimentos Ltda -- H-D
Michigan, Inc v Sinal Certo Corretora de Seguros Ltda -- Nestlé Brasil Ltda v Veneza
Express.
Subject: Trade dress--case law--Brazil
Subject: Intellectual property law--Brazil
SNIPER No.: 2013/01197
Author: Foote, Charlie
Title: Leadership in the patent profession
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of
Patent Agents. Vol. 42 No. 3, March 2013, pp. 132-135.
Summary: Leadership -- leadership compared with leader -- compared with decision
making -- leadership compared with management -- professional firm -- leadership and
size of practice -- shared leadership -- patent practices and change -- is change beneficial
-- external dangers -- internal opportunities -- internal dangers -- benefits of continuing as
we are -- patent firms attitudes to leadership -- legitimacy of leadership -- stability of the
patent profession.
Subject: Intellectual property management
SNIPER No.: 2013/01144
Author: Vilau, Dragos M.
Title: A licence for success
Source: World Trademark Review. No. 43, June-July 2013, pp. 128-129.
Summary: Trade mark licensing in Romanian Trademark Law -- breaches of a licensing
agreement -- requirements under law -- recording licensing agreements with the
Romanian Patent and Trademark Office (RPTO) -- registration of a trade mark licence with
the RPTO -- questions that should be posed when executing a licensing agreement -competition issues related to licensing.
Subject: Intellectual property licensing--Romania
Subject: Competition law--Romania
SNIPER No.: 2013/01138
Author: Tchernych, Tarja
Title: Licence to bill
Source: World Trademark Review. No. 43, June-July 2013, pp. 116-117.
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Summary: Exploiting a brand's value through licensing -- licensing strategies -- benefits of
licensing -- statutory and legal issues to consider -- legal framework in Finland -- Angry
Birds -- rapidly expanded to fields outside video games -- merchandise, theme parks and
playgrounds -- Angry Birds licences generate a significant part of Rovio's revenues in
addition to the game -- counterfeit merchandise in large volumes -- Rovio turned a
potential infringer into a partner.
Subject: Intellectual property licensing--Finland
Subject: Brand management--Finland
SNIPER No.: 2013/00867
Author: Corless, Peter F.
Title: A licence to life: Monsanto's seed patents
Source: Intellectual Property Magazine. April 2013, pp. 49-50.
Summary: Bowman v Monsanto -- patent exhaustion doctrine as applied to self
replicating genetically modified products, including cells and seeds -- questions presented
by the case -- Federal Circuit -- Supreme Court -- patent exhaustion: use versus make -unintended infringer.
Subject: Patents--agriculture industry
Subject: Patent exhaustion
SNIPER No.: 2013/00698
Author: Marotta, Christopher
Title: Licensing in the public interest: limits on patent property rights in China and India
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 3, March 2013, pp.
213-225.
Summary: Risk of compulsory licensing of patents to third parties in China and India -significant gaps in patent protection independent of compulsory licensing -- poses more
significant risk in the future as India and China confirm their legal standards to
international treaties such as Trade Related Aspects of Intellectual Property Rights
(TRIPS) -- methods available to patent holders to diminish their exposure to compulsory
license risk -- remaining limitation on patent exclusivity.
Subject: Compulsory licensing--China
Subject: Compulsory licensing--India
Subject: Competition (Economics)
SNIPER No.: 2013/01147
Author: Kuhn, Perla M.
Title: Losing a trademark under naked licensing law
Source: World Trademark Review. No. 43, June-July 2013, pp. 134-135.
Summary: Trade mark licensor is required to control the quality of goods and services
offered by a licensee under a mark -- if quality is not monitored or enforced the licence
may be considered a 'naked licence' -- mark may lose its significance -- become
involuntarily abandoned -- legal framework -- naked licensing inquiry -- level of quality
control -- reliance on a long term relationship -- potential scope of abandonment -recommendations.
Subject: Trade mark licensing--law and legislation--United States
Subject: Trade mark abandonment--United States
SNIPER No.: 2013/00699
Author: Katsouli, Konstantia
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Title: Lucasfilm v Ainsworth: comments in the light of Greek copyright law
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 3, March 2013, pp.
226-236.
Summary: -- functionality versus art -- UK Supreme Court decision -- creations which
appeared in the film 'Star Wars' -- costumes for Imperial Stormtroopers, helmets and
special equipment -- could not qualify as artistic works -- dismissing claims regarding
copyright infringement -- emerged the issue of the distinction between artistic works,
especially sculptures and designs in light of the relevant UK legislation -- comments on
this decision in light of Greek copyright law -- relationship between Greek industrial
property law and copyright law -- cumulative protection -- utility models in Greek industrial
property law -- resale right -- right to access.
Subject: Copyright infringement--case law--United Kingdom
Subject: Industrial design rights--law and legislation--United Kingdom
Subject: Copyright owners' rights--Greece
SNIPER No.: 2013/00987
Author: Zhang, Xu
Title: Major developments in 2012
Source: Managing Intellectual Property. China IP Focus, 2013, pp. 36-38.
Summary: Several important events in legislation, justice and administrative enforcement
in 2012 -- Government has continued to enhance intellectual property (IP) protection -number of major IP cases have been dealt with and examined by the NAIC (National
Administration for Industry and Commerce) -- AQS (Administration for Quality Supervision)
-- local IPO (Intellectual Property Office) -- Copyright Administration -- PSB (Public
Security Bureau) -- the courts.
Subject: Intellectual property law--reform--China
Subject: Intellectual property rights--China
SNIPER No.: 2013/00862
Author: Nicholls, Rachel
Title: Major IP pitfalls in bringing new products to market
Source: Intellectual Property Magazine. April 2013, pp. 39-40.
Summary: Issues to consider when launching a fast-moving consumer goods (FMCG)
product -- consider third party rights -- patents and registered designs -- trade marks -copyright and unregistered design right -- avoiding the pitfalls.
Subject: Brand management
Subject: Intellectual property rights
SNIPER No.: 2013/01146
Author: Goodger, Ben
Title: Making the most of trademark licensing
Source: World Trademark Review. No. 43, June-July 2013, pp. 132-133.
Summary: Licensing trade marks in the United Kingdom -- objectives of the licensing
strategy -- activities to be covered by the licence -- whether licensees carry out sales
promotions or advertising -- which trade marks will be covered by the licence -- if any other
associated intellectual property (IP) rights need to be licensed -- terms of the trade mark
licence -- scope of the licence -- exclusive, sole and non-exclusive licences -- licensee's
explicit acceptance that the marks are owned by the licensor -- licensor will seek to
impose a number of obligations -- main provisions -- ensure that the licensee maintains
the integrity of the trade mark -- provisions covering marketing and advertising -- whether
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the licensee is permitted to sub-license -- ownership of goodwill -- Fine & Country Ltd v
Okotoks Ltd -- royalty provisions -- additional considerations.
Subject: Trade mark licensing--United Kingdom
Subject: Brand management--United Kingdom
SNIPER No.: 2013/01169
Author: Andanda, Pamela A.
Title: Managing intellectual property rights over clinical trial data to promote access and
benefit sharing in public health
Source: IIC: International Review of Intellectual Property and Competition Law. Vol. 44
No. 12, 2013, pp. 140-147.
Summary: Balancing rights over clinical trial data -- Art. 39 of the TRIPS Agreement -such data should not be considered commercially confidential information -- ethical and
legal concerns -- view to fostering access and benefit sharing in public health -- options for
strategic management -- inform decision making in the management of IPR -- data
exclusivity may impede efforts by clinical researchers, regulatory authorities and other
stakeholders to ensure benefit sharing (BS) with clinical research participants -- parties
most concerned are pharmaceutical companies and those consumers that will benefit
from the research and the outcomes it may bring -- differing views on the scope of
protection that should be given to CT data.
Subject: Benefit sharing
Subject: Medical research
SNIPER No.: 2013/01131
Author: Zhao, Lei
Title: Managing Sino-foreign joint ventures in China
Source: World Trademark Review. No. 43, June-July 2013, pp. 91-94.
Summary: Chinese companies seeking to produce goods in conjunction with companies
from Europe and the United States -- desire for Western foods and products among the
Chinese middle class -- allow Western companies to exploit the Chinese enterprise's
geographical advantage -- reduce financial expenditure and operational costs -- enjoy
preferential treatment as foreign investors -- Sino-foreign joint ventures are different from
wholly foreign-owned enterprises and merely license trade in China -- fundamental issues
regarding partner selection, trade mark protection and negotiating strategies -- case law -Wahaha v Danone.
Subject: Business collaboration--China
Subject: Investment--China
SNIPER No.: 2013/01187
Author: Hall, Bronwyn H.
Title: Market value and patent citations
Source: RAND Journal of Economics. Vol. 36, No. 1, Spring 2005, pp. 16-38.
Summary: Usefulness of patent citations as a measure of the "importance" of a firm's
patents -- estimating market value as a function of knowledge stocks -- sample statistics
for patenting firms -- model specification -- timing of citations -- industry effects -intangible assets -- R&D and simple patent counts -- citations-based analysis not usable
for evaluating current or very recent innovations.
Subject: Value of intellectual property--economics
Subject: Patents--analysis
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SNIPER No.: 2013/01010
Author: Chan, Johnny
Title: Meeting Murli
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 2, February 2013, pp. 3839.
Summary: Interview with Murlidhar Balasubramanian, trade mark counsel at Castrol India
-- current and future intellectual property landscape in India -- protection of organisation
assets -- laws relating to IP enforcement -- improved IP systems -- backlogs at trade mark
offices -- emphasis on regulations -- challenge of protecting trade marks -- encourages
membership of International Trademark Association (INTA).
Subject: Balasubramanian, Murlidhar--interviews
Subject: Trade marks--India
Subject: Intellectual property management--India
SNIPER No.: 2013/01122
Author: Qi, Fang
Title: Michael Jordan, Apple and soft drinks: the trademark year in China
Source: World Trademark Review. No. 43, June-July 2013, pp. 58-59.
Summary: Unauthorised registration of celebrity names -- laws and judicial practice try to
curb malicious registration -- Apple's $60 million settlement in IPAD dispute -- the
importance of local expertise -- potentially significant impact on damages -- trade mark
licensing strategies.
Subject: Trade marks--case law--China
Subject: Personality rights--case law--China
SNIPER No.: 2013/01177
Author: Gange, David M.
Title: The new Cooperative Patent Classification System improving patent searching
Source: Online searcher. Vol. 37 No. 1, January-February 2013, pp. 27-30.
Summary: United States and European patent offices started using the new Cooperative
Patent Classification (CPC) system on January 1, 2013 -- replaces U.S Patent
Classification (USPC) and European Classification (ECLA) -- history of development of the
CPC -- benefits of cooperating in the development and maintenance of the CPC system -efficiency gains -- speed up patent searching -- eliminate redundant work -- reduce the
patent examination backlog -- benefits for external patent information specialists -- patent
database providers' plans to include CPC data -- suggested patent classification internet
resources.
Subject: Patent classification
Subject: Patent searching
SNIPER No.: 2013/01127
Author: Emert, Aryn M.
Title: Nike stirs up the opinions from 2012, which suggest discretion may well be the
better part of valour
Source: World Trademark Review. No. 43, June-July 2013, pp. 77-80.
Summary: Already v Nike -- doctrines of functionality and aesthetic functionality -Louboutin v Yves Saint Laurent -- Maker's Mark Distillery v Diageo N -- Rosetta Stone v
Google -- Fleischer Studios v AVELA -- preliminary injunctive relief -- Tre Milano v
Amazon.com -- Rovio Entm't v Royal Plush Toys.
Subject: Trade mark infringement--case law--United States
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Subject: Legal defences--United States
SNIPER No.: 2013/00142
Author: McGuinness, Seán
Title: Observations on free riding after L'Oréal v Bellure
Source: Journal of Intellectual Property Law and Practice. Vol. 7 No. 12, December 2012,
pp. 890-899.
Summary: Free riding under trade mark law in the European Union -- proscription of free
riding/unfair advantage -- defences available to the prima facie free rider -- framed by a
Trade Mark Directive and a Regulation -- Court of Justice of the European Union (ECJ)
ruling L'Oréal SA v Bellure NV -- free riding and the role of the trade mark system -functions of the trade mark -- subsequent developments in the courts of England and
Wales -- understandings from unjust enrichment and property -- defences -- Article 6
jurisprudence -- pre and post L'Oréal -- decision in L'Oréal, that free riding is sufficient to
ground Article 5(2) dilution.
Subject: Trade mark dilution--Europe
Subject: Passing-off--Europe
SNIPER No.: 2013/00626
Author: Graham, Stuart J. H.
Title: Of smart phone wars and software patents
Source: Journal of Economic Perspectives. Vol. 27 No. 1, Winter 2013, pp. 67-86.
Summary: Concerns about software patents -- role they play in litigation in the smart
phone industry -- treatment of patents that include software elements by United States
Patent and Trademark Office (USPTO) -- empirical evidence regarding examination by the
USPTO of software patents, their validity and role in the smart phone wars -- major recent
legislative and administrative reforms in the US patent system -- responsible actions of
USPTO in engaging constructively with criticisms and calls for reform.
Subject: United States. Patent and Trademark Office
Subject: Computer-related inventions--United States
Subject: Patent litigation--information technology industry--United States
SNIPER No.: 2013/00879
Author: Dennis, James
Title: On the canvas
Source: Intellectual Property Magazine. April 2013, pp. 75-76.
Summary: Boxing Brands v Sports Direct International, Queensberry Boxing IP,
Sportsdirect.com Retail, Lillywhites Ltd -- United Kingdom High Court -- balance of
convenience -- delay -- damage -- clearing the way -- ruling -- risk management -- prompt
action by owner.
Subject: Trade mark ownership--case law--United Kingdom
Subject: Trade mark infringement--case law--United Kingdom
SNIPER No.: 2013/01168
Author: Dreier, Thomas
Title: Online and its effect on the "goods" versus "services" distinction
Source: IIC: International Review of Intellectual Property and Competition Law. Vol. 44
No. 2, 2013, pp. 79-95.
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Summary: Online offerings of copyrighted works -- Court of Justice of the European
Union decisions in UsedSoft (C-128/11) and Football Association Premier League (C403/08) and Murphy (C-428/08) -- legal concept of notion of "goods" and notion of
"services" -- why the CJEU argued on the basis of freedom of movement of goods in
UsedSoft whereas it based its argument on the freedom of movement of services in
Murphy -- when and according to what criteria the CJEU will give preference to the EU
freedoms over rightsholders exclusive rights, and when it will not -- decisions handed
down by the CJEU so far have not yet provided much guidance.
Subject: Copyright--case law--Europe
Subject: Fair use (Copyright)--case law--Europe
SNIPER No.: 2013/00935
Author: Hidalgo, Antonio
Title: Optimization of prediction methods for patents and trademarks in Spain through the
use of exogenous variables
Source: World Patent Information. Vol. 35 No. 2 June 2013, pp. 130-140
Summary: Significance of patent and trade mark application forecasting -- improvements
using exogenous variables demonstrated -- research integrated expertise on statistics,
prediction software and user surveys -- R & D investments and previous variability key
pointers in the analysis.
Subject: Patent filing--trends--Spain
Subject: Trade mark filing--trends--Spain
SNIPER No.: 2013/01107
Author: Rahmatian, Andreas, 1967Title: Originality in UK copyright law: the old "skill and labour" doctrine under pressure
Source: IIC: International Review of Intellectual Property and Competition Law. Vol. 44
No. 1, 2013, pp. 4-34.
Summary: General principles of copyright in the UK -- a work is "original" for copyright
purposes when it is the result of the authors own skills, labour, judgment and effort -CJEU decisions in Infopaq and Football Dataco -- Bespecnosti and Painer -- changed the
general principles of copyright originality in the UK -- imported an understanding of
originality from author's rights systems -- view is consider "extreme" -- CJEU rulings offer
slight adjustment of the UK originality definition -- not a fundamental change -- not
practically relevant in most cases -- recent interpretation of "originality" by the CJEU -principal conceptions of originality in UK copyright and European author's rights (Droit
d'auteur) countries -- realities -- the same wording of a statute or EU-Directive in different
legal cultures: a problem of comparative law -- possible future development of the
originality requirement in UK copyright law.
Subject: Copyright--case law--United Kingdom
Subject: Copyright--law and legislation--United Kingdom
SNIPER No.: 2013/00690
Author: Montagnon, Rachel
Title: The (Pantone) colour purple: a milky path home for Cadbury's trade mark
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 3, March 2013, pp.
190-192.
Summary: Reviews the decisions on colours both in the Courts of England and Wales
and in the Court of Justice of the European Union -- Sociéte des Produits Nestlé S.A. v
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Cadbury UK Limited [2012] EWHC 2637 (Ch) (Judge Birss QC, sitting as a judge of the
High Court, England and Wales), 1 October 2012 -- appeal by Nestlé Cadbury's trade
mark registration for the colour purple -- High Court has allowed the 'purple' colour mark to
remain on the Register but has restricted the specification to cover milk chocolate only,
rather than allowing the wider ‘chocolate’ which had previously been allowed by the
Registrar in respect of the types of goods listed in the specification -- strength of trade
marks and their ability to create perpetual monopolies -- use of Pantone numbers
recommended for colour marks.
Subject: Colour marks--case law--United Kingdom
Subject: Trade mark distinctiveness--case law--United Kingdom
Subject: Trade mark registrability
SNIPER No.: 2013/01191
Author: McCarthy, Andrew
Title: Patent box perils
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of
Patent Agents. Vol. 42 No. 3, March 2013, pp. 118-119.
Summary: Low tax regime for a company's profits derived from certain types of patents
owned or exclusively licensed to the company -- patent box -- extra deductions -calculating profits from trade for corporation tax purposes -- effective corporation tax rate
of 10% for relevant IP profits -- criteria must be met -- Her Majesty's Revenue & Customs
(HMRC) able to charge a penalty -- patent box relief as means of tax evasion -- may start
criminal proceedings -- must meet conditions for the tax relief.
Subject: Business taxation--United Kingdom
Subject: Patents--economics--United Kingdom
SNIPER No.: 2013/01188
Author: Sterzi, Valerio
Title: Patent quality and ownership: an analysis of UK faculty patenting
Source: Research Policy. Vol. 42 No. 2, March 2013, pp. 564-576.
Summary: Relationship between patent quality and ownership -- analysis of sample of
university-owned and corporate-owned academic patents in the UK from 1990 to 2001 -main results -- academic patents owned by companies receive more citations in the first
years after filing than patents owned by universities or other public research organizations
(PRO) -- change of ownership is an indicator of patent quality -- academic patents owned
by companies but originally assigned to universities or other PROs show higher quality
premium -- researcher's scientific quality appears slightly correlated with patent quality.
Subject: Patent ownership--education and training industry
Subject: Patents--analysis
Subject: Technology transfer
SNIPER No.: 2013/01198
Author: Burk, Dan L.
Title: Patent reform in the United States: lessons learned
Source: Regulation. Vol. 35 No. 4, Winter 2012-2013, pp. 20-26.
General Note: Originally published as University of California, Irvine School of Law &
Legal Studies Research Paper Series, No. 2013-84.
Summary: Major reform of American patent law -- problems of developing a uniform
system to apply to different industries -- America Invents Act (AIA) -- resolves some old
issues -- creates some new problems -- ambiguities and inconsistencies will need to be
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resolved by the courts -- may take decades of litigation to see effect of patent law changes
on innovation.
Subject: United States. Leahy-Smith America Invents Act
Subject: Patent systems--reform--United States
SNIPER No.: 2013/00696
Author: Robin, Jacob, Sir
Title: Patent thickets: a paper for the European Patent Office Economic and Scientific
Advisory Board meeting
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 3, March 2013, pp.
203-206.
Summary: Patents and patent applications -- 'thickets' of valid patents and invalid patents
-- width of claim -- how patent law copes with claims of undue width -- undue width
produce a compliance problem -- patent validity and quality -- essentiality -- a contributory
factor in those industries where an entrant is faced with a large number of essential
patents -- patent applications and divisionals -- patentees frequently divide their original
applications into one or more divisional patents -- parts of the application which the Office
finds acceptable and other parts which it does not -- the patentee can divide out the
uncontroversial part and get early protection for that -- leaving the controversial part for
argument, evidence and possible appeal -- 'royalty stacking' -- suggests some view the
problem of patent compliance is so great that innovation itself is deterred.
Subject: Patent litigation--Europe
Subject: Patent infringement--Europe
SNIPER No.: 2013/00421
Author: Zhang, Anna
Title: The patent war
Source: Asia IP: Protecting your Intellectual Assets. Vol. 4 No. 10, November 2012, pp.
13-18.
Summary: Legal confrontation between technology titans Apple and Samsung -- ten
Jurisdictions were involved and over fifty cases have been heard -- discussion with
lawyers and top industry analysts regarding what the case means to the technology sector
-- Apple plans to use the Samsung trial to build case law and eventually to go after other
manufacturers -- two kinds of innovation -- incremental innovation -- disruptive or radical
innovation -- rise of "Copycats".
Subject: Patent infringement--case law
Subject: Patent litigation--information technology industry
Subject: Computer-related inventions
SNIPER No.: 2013/01103
Author: Soini, Sirpa
Title: Patenting and licensing in genetic testing: ethical, legal and social issues
Source: European Journal of Human Genetics. Vol. 16 No. S1, May 2008, pp. S10-S50.
Summary: Rise of patents on human genes during the 1990s -- genetic testing in the
clinic -- ethical aspects of patents -- patentability criteria -- exemptions from patentability -problems related to patents -- licensing policies and agreements -- remedies within the
patent system -- opposition and revocation -- research exemption -- compulsory licensing - novel approaches to fixing the problems -- balance between competition law and patent
rights -- societal and economic aspects.
Subject: Genes--patentability
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Subject: Patents
Subject: Ethics
SNIPER No.: 2013/01183
Author: Trajtenberg, Manuel
Title: A penny for your quotes: patent citations and the value of innovations
Source: RAND Journal of Economics. Vol. 21, No. 1, Spring 1990, pp. 172-187.
Summary: Use of patent indicators in economic research -- patent counts cannot be
informative about innovative output -- patent counts weighted by citations as indicators of
the value of innovations -- overcoming the limitations of simple counts -- patents exhibit
variance in their "importance" or "value" -- simple patent counts cannot be very informative
of innovative "output" -- patents in Computed Tomography scanners -- close association
between citation-based patent measures and independent measures of the social value of
innovations in that field.
Subject: Value of intellectual property--economics
Subject: Patents--analysis
SNIPER No.: 2013/01114
Author: McCutcheon, Jani
Title: Perez v. Fernandez: Australia's first decision on the moral right of integrity
Source: Australian Intellectual Property Journal. Vol. 23 No. 3, April 2013, pp. 174-186.
Summary: Federal Magistrates Court decision -- right of integrity of authorship -allegations of infringement of both copyright and the moral right of integrity by Mr
Fernandez's modification of Mr Perez's song, Bon Bon -- facts of the case -- analysis of
the decision -- meaning of "is prejudicial to either honour or reputation" -- evidence of
prejudice -- comparative evidence of prejudice in other jurisdictions -- Canadian and UK
decisions -- meaning of "honour" separate to "reputation" -- consideration of prejudice to
"honour" in Perez -- damages for breach of moral right of integrity.
Subject: Moral rights--case law--Australia
Subject: Artistic works--case law--Australia
Subject: Copyright infringement--case law--Australia
SNIPER No.: 2013/01195
Author: Atkinson, Holly J.
Title: Personalized medicine patents at risk: tips for battling Prometheus and Myriad to
obtain claims to diagnostics
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of
Patent Agents. Vol. 42 No. 3, March 2013, pp. 126-129.
Summary: Protection of personalised medicine inventions in the US -- tailoring of medical
treatment to the individual characteristics of each patient -- developments in US courts
upset settled assumptions about certain types of personalised medicine claims -- Mayo v
Prometheus, Myriad, and Classen -- compound claims in Myriad -- review the strategy for
obtaining claims to personalise medicine-related technologies -- combination of markers -administration steps -- man-made samples.
Subject: Patentability--case law--United States
Subject: Pharmaceuticals--patentability--United States
Subject: Medical procedures--patentability--United States
SNIPER No.: 2013/00866
Author: Pudelka, Glenn G.
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Title: Piracy in paradise
Source: Intellectual Property Magazine. April 2013, p. 51.
Summary: World Trade Organization (WTO) granted Antigua and Barbuda the right to
suspend enforcement of intellectual property rights -- to recover losses that Antigua claims
it suffered from a US ban on cross-border gambling services -- Antigua suggested
developing a government sanctioned website that permits downloading movies, software
and music at a fraction of the normal price -- merchandise bearing trade marks and logos
of famous brands could be sold in Antigua or on the website with no compensation to the
rights holders -- larger ramifications of the WTO's decision.
Subject: Copyright infringement--Antigua
Subject: Intellectual property enforcement--Antigua
SNIPER No.: 2013/01113
Author: Davison, Mark J.
Title: Plain packaging and the TRIPS Agreement: a response to Professor Gervais
Source: Australian Intellectual Property Journal. Vol. 23 No. 3, April 2013, pp. 160-173.
Summary: Australia's laws on plain packaging of tobacco products -- subject of
complaints to the World Trade Organization (WTO) -- continuing debate on key issues
which WTO needs to address in adjudicating these complaints -- whether a right to use a
trade mark can be implied from Article 20 of the TRIPS agreement or from the provisions
of the Paris Convention which are incorporated into TRIPS -- reasons for opinion that
there is no right of use of trade mark -- limits inquiry into which aspects of plain packaging
must be justified within the meaning of Art 20 -- considers justification in the context of the
international trade mark system -- relevance of Technical Barriers to Trade agreement to
plain packaging.
Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994)
Subject: Trade dress
Subject: Trade mark owners' rights
Subject: Trade mark use
SNIPER No.: 2012/01531
Author: Correa, Carlos María
Added author: Quaker United Nations Office
Title: The politics and practicalities of a disclosure of origin obligation
Source: Occasional Paper (Quaker United Nations Office). No. 16, January 2005.
Summary: Developing countries -- recognition of an obligation to disclose the origin of
biological resources and the associated traditional knowledge (TK) claimed in patent
applications -- examines issues that may influence the establishment of an internationally
binding disclosure of origin obligation -- some countries impose an obligation at the
national level -- effectiveness limited in the absence of an international rule that sets the
terms of the obligation -- consequences of failure to comply -- possible strategies to
achieve the developing countries objective.
Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994)
Subject: Disclosure of origin
Subject: Biodiversity--treaties--developing countries
SNIPER No.: 2013/01121
Author: Whitwell, Stuart
Title: The power of brands: understanding royalty rates
Source: World Trademark Review. No. 43, June-July 2013, pp. 52-55.
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Summary: Royalty rate must be agreed by brand owner (the licensor) and the party
licensing the brand (the licensee), when licensing intellectual property -- rates can vary
significantly -- depending on the status of the brand in the market and the nature of the
agreement -- Virgin Group -- licensing a brand can expand brand recognition -- royalty
rates and licence agreements -- the value of brands -- calculating and negotiating royalty
rates -- calculating the true value of your brand contribution -- Intangible Business Brand
Matrices -- resurrecting brands -- pension securitisation -- music industry -- new brands -understanding royalty rates.
Subject: Intellectual property licensing
Subject: Brand management
SNIPER No.: 2013/01043
Author: Burrell, Robert
Title: The PPSA and registered trade marks: when bureaucratic systems collide
Source: UNSW Law Journal. Vol. 34 No. 2, 2011, pp. 600-627.
Summary: Reforms to Personal Properties Securities Act 2009 (Cth) (PPSA) -- security
interests in personal property in Australia -- bureaucratisation of property rights -registered trade marks and securities before the PPSA Reforms -- effect of the PPSA
reforms -- enforceability of security interests over registered trade marks arising after the
registration commencement time -- imperfect information and transition costs -- ongoing
role of recording claims in the Trade Mark Register (TMR) -- problems caused when title in
property passes to the secured party -- opportunities and obstacles.
Subject: Financial management--Australia
Subject: Trade mark owners' rights--Australia
Subject: Intellectual property management--reform--Australia
SNIPER No.: 2013/01159
Author: Duxbury, Patrick
Title: Practice on refunding royalties compared
Source: Managing Intellectual Property. No. 228, April 2013, pp. 44-46.
Summary: When a patent is revoked, licensees of that patent have sometimes attempted
to claim back the royalties they paid up to that point -- they have been largely
unsuccessful -- courts in the UK, US, France and elsewhere have ruled that the licensee
got what it paid for during that period -- in France the point is complicated if another party
has used the patent without a licence -- in Germany the licensee can decide at which point
the patent is obviously invalid -- in the EU as a whole the European Commission has
reversed its view on whether contracts that can punish a licensee for challenging the
patent are anti-competitive.
Subject: Patent revocation
Subject: Intellectual property licensing
SNIPER No.: 2013/01066
Author: Shinall, Michael A.
Title: Priority and disclosure: challenges and protections to small inventors in a first-to-file
world
Source: Journal of the Patent and Trademark Office Society. Vol. 94 No. 4, 2012, pp.
362-386.
Summary: United States patent law reform -- America Invents Act -- granting priority of
invention to the first inventor to file -- policy shift harmonises the U.S. patent system with
the rest of the world -- creates potential problems for small firms or inventors -- race to the
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patent office to file first ahead of large competitors -- small inventors may find protection in
the new grace period -- grants inventors who publicly disclose their inventions priority over
all third parties -- disclosures under the new law to establish priority will be achieving the
historically recognised patent law goals of encouraging inventors to disclose their work -increasing dissemination of information to the public.
Subject: United States. Leahy-Smith America Invents Act
Subject: Patent systems--law and legislation--United States
Subject: Patent disclosure--law and legislation--United States
Subject: Harmonisation of laws
SNIPER No.: 2013/00137
Author: Crowne-Mohammed, Emir Aly
Title: 'Private study' need not be done in 'splendid isolation' to be fair dealing
Source: Journal of Intellectual Property Law and Practice. Vol. 7 No. 12, December 2012,
pp. 852-854.
Summary: Alberta (Education) v Canadian Copyright Licensing Agency (Access
Copyright), 2012 SCC 37, Supreme Court of Canada, 12 July 2012 A majority of the
Supreme Court of Canada ruled that photocopying small amounts of material for
classroom use qualified as 'private study' under the fair dealing provisions of the Copyright
Act -- test for fair dealing was set out Supreme Court earlier decision CCH Canadian Ltd v
Law Society of Upper Canada, 2004 SCC 13 (CCH) -- teachers can photocopy short
excerpts from textbooks for classroom use in Canada -- the photocopying falls within the
'private study' exception of the Copyright Act -- balancing the rights of creators with those
of users, it is particularly important for the scales to be balanced when it comes to
education.
Subject: Copyright--education and training industry--Canada
Subject: Copyright owners' rights--education and training industry--Canada
SNIPER No.: 2013/01065
Author: Ghosh, Samantak
Title: Prometheus and the natural phenomenon doctrine: let's not lose sight of the forest
for the trees
Source: Journal of the Patent and Trademark Office Society. Vol. 94 No. 4, 2012, pp.
330-361.
Summary: Patentable subject matter -- Supreme Court decision Mayo Collaborative
Services v Prometheus Laboratories -- biotechnology -- Prometheus sued for patent
infringement -- Supreme Court ruled Prometheus patents invalid -- application by the
courts of the natural phenomenon doctrine -- patentability requirements -- evolving
doctrine -- against expansion of patentable subject matter -- facade of doctrinal
consistency -- basis for excluding natural phenomenon -- Section 102 -- Section 103 -Section 112.
Subject: Patentability--case law--United States
Subject: Patentability--science and research industry--United States
Subject: Medical procedures--patentability--United States
SNIPER No.: 2013/01171
Author: Mulder, Cees, 1954Title: Proposals for streamlining the filing date requirements of the European Patent
Convention
Source: IIC: International Review of Intellectual Property and Competition Law. Vol. 44
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No. 1, 2013, pp. 63-78.
Summary: Alignment of the European Patent Convention (EPC) provisions with the filing
date requirements of the Patent Law Treaty -- resulted in a complex system of procedural
requirements -- burden on the European Patent Office -- complicated work of patent
attorneys -- proposal to simplify the filing date requirements in the Implementing
Regulations of the EPC patent application -- compulsory presence of at least one claim to
the requirements for the accordance of a filing date -- procedural requirements -- filing
date -- claims -- late filing of documents -- patent law treaty.
Subject: European Patent Convention (1973)
Subject: Patent applications
Subject: Patent processing
SNIPER No.: 2013/00881
Author: Paul, Graham
Title: Protecting trade secrets
Source: Intellectual Property Magazine. April 2013, pp. 80-81.
Summary: How to protect against employees taking knowledge to competitors after they
leave a company -- law recognises that trade secrets are subject to implied duty of
confidentiality after the end of an employment relationship -- most employers will look to
the contract of employment and post-termination restrictions to protect their business
interests -- employers need to tailor restrictive covenants to each key employee -consider what type of protection they need -- what they are trying to protect -- how long
they need to impose the restriction -- don't rely on implied duties -- monitor and review -have a strategy for protecting confidential information -- consider specific restrictions to
deal with team moves -- legal action needs to be considered carefully.
Subject: Trade secrets
Subject: Confidentiality agreements
SNIPER No.: 2013/01118
Author: Gyngell, Julian
Title: Raising the bar for Australian trademark law
Source: World Trademark Review. No. 43, June-July 2013, pp. 12-13.
Summary: Intellectual Property Laws Amendment (Raising the Bar) Act 2012 -introduced a number of significant changes to intellectual property law -- forms part of the
Australian government's innovation agenda, "Powering Ideas" -- reforms seek to improve
balance of protection -- clarification of the presumption of registrability -- trade mark
oppositions -- changes are intended to speed up opposition procedures in the registry -changes made to strengthen the enforcement of trade mark rights -- improvements to the
attorney profession.
Subject: Australia. Intellectual Property Laws Amendment (Raising the Bar) Act 2012
Subject: Intellectual property law--reform--Australia
SNIPER No.: 2013/00777
Author: Owens, Chris
Title: Raising the bar in intellectual property
Source: Law Society Journal. Vol. 51, February 2013, pp. 62-65.
Summary: Amendments to patent laws in Australia -- major changes commencing on 15
April 2013 -- legal practitioners should consider filing complete applications and requesting
examination before that date -- key amendments -- raising quality of granted patents -reducing delays in prosecution -- amendment introducing free access to patented
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invention for regulatory approvals and research came into effect on 15 April 2012.
Subject: Australia. Intellectual Property Laws Amendment (Raising the Bar) Act 2012
Subject: Patent systems--law and legislation--Australia
SNIPER No.: 2013/00984
Author: Liang, Hui
Title: Reaching a coherent definition
Source: Managing Intellectual Property. China IP Focus, 2013, pp. 18-22.
Summary: Original equipment manufacturer (OEM) -- also referred to as 'label
processing' -- most of China's OEM products being exported out of the country -- first-tofile system -- use of a mark not required for obtaining trade mark registration -- use of a
trade mark essential in terms of registration maintenance and infringement claims -statutory definition of trade mark use -- recent decisions -- trade mark dispute cases -trade mark cancellation for non-use -- proposed amendment to the trade mark law -flexible approach in the explanation of trade mark use.
Subject: Trade mark use--case law--China
Subject: International trade--China
SNIPER No.: 2013/01194
Author: Johnson, Jennifer A.
Title: Recent developments in US patent term adjustment
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of
Patent Agents. Vol. 42 No. 3, March 2013, pp. 124-125.
Summary: Patent term adjustment (PTA) -- District Court decisions -- possibility that
patentees may be entitled to months or years of additional patent term -- request for
continuation (RCE) -- additional term could represent millions of or hundreds of million
dollars in value for products -- pharmaceuticals see peak sales towards the end of their
patent life -- Exelixis and Novartis decisions -- second Exelixis v Kappos decision -- impact
of RCE cases on practitioners -- implications for filing a RCE before the three year filing
anniversary given uncertainty in the law -- USPTO's calculation methods -- a decision by
the Federal Circuit is anticipated.
Subject: Patent terms--United States
Subject: Patent extension--pharmaceutical industry--United States
SNIPER No.: 2013/01042
Author: Paul, John C.
Title: Recent U.S. court decisions and developments affecting licensing
Source: Les Nouvelles. Vol. 48 No. 1, March 2013, pp. 80-85.
Summary: Patent licence agreements -- provisions seeking to bar validity challenges -Supreme Court decision Lear v. Adkins -- Lotes Co. v. Hon Hai Precision Industry Co.
decision -- importance of careful drafting -- considering extrinsic evidence -- considering
the effect of negotiation discussions -- Yale Preston v. Marathon Oil Co -- continued
employment -- assignment of patent rights -- literal infringement -- Transocean Offshore
Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d 1296 (Fed. Cir. 2010)
('Transocean I) -- obviousness -- careful drafting of an agreement -- reasonable royalty.
Subject: Patent licensing--United States
Subject: Legal procedure--United States
Subject: Damages--United States
SNIPER No.: 2013/01175
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Author: Reynolds, Amy
Title: Red Bull's proactive trade mark strategy pays off in Australia
Source: World Intellectual Property Report. Vol. 27 No. 5, May 2013, pp. 44-46.
Summary: Red Bull GmbH 's success in securing protection against a number of third
parties for similar trade marks or get-up in Australia -- decisions from the Delegates of the
Registrar of Trade Marks -- oppositions to registration of marks -- Bull Rider case -- Bull
GmbH v. Bull Riders Incorporation (Thailand) Limited -- deceptive similarity -- Replay
Energy Drink case -- Red Bull GmbH v. Altanea Gida Anonim Sirketi -- opposition by Red
Bull to extension of protection of an International Registration Designating Australia -- Red
Bull's reputation in trade dress established -- Red Eagle case -- Federal Court of Australia
decision in Chia Khim Lee Food Industries Pte Ltd v. Red Bull GmbH (No. 1) -- application
for removal of Red Bull's registration for RED HAWK mark for non-use.
Subject: Confusing similarity--case law--Australia
Subject: Trade dress--case law--Australia
Subject: Trade marks abandonment--case law--Australia
SNIPER No.: 2013/00992
Author: Dong, Wei
Title: A refined law
Source: Managing Intellectual Property. China IP Focus, 2013, pp. 64-66.
Summary: Patent infringement litigation is a civil procedure in China -- two instance
system -- amendments to China's Patent Law -- amended Civil Procedure Law -provisions of expert opinions have been refined -- amendments to preservation orders -execution of a judgment in patent infringement litigation -- seizures of the defendant's
property and the Court's orders to act -- second instance and retrial -- new regulations of
the amended Civil Procedure Law -- cost of litigation.
Subject: Patent litigation--China
Subject: Law--reform--China
SNIPER No.: 2013/00991
Author: Li, Weifeng
Title: Releasing IP potential
Source: Managing Intellectual Property. China IP Focus, 2013, pp. 58-62.
Summary: Patent and trade mark licences -- patent and trade mark rights transfer -investment through shares -- pledged patent and trade mark rights -- continuing
education.
Subject: Intellectual property licensing--China
Subject: Intellectual property assignment--China
SNIPER No.: 2012/02865
Author: Bertoni, Aura
Title: Research and "development as freedom": improving democracy and effectiveness
in pharmaceutical innovation for neglected tropical diseases
Source: IIC: International Review of Intellectual Property and Competition Law. Vol. 43
No. 7, 2012, pp. 771-797.
Summary: Instrumental function of intellectual property -- human rights framework -evaluating efficiency and legitimacy of IP rights for knowledge enhancement -- access to
knowledge (A2K) movement -- access to medicines initiative -- Doha Declaration of TRIPS
and Public Health -- inefficiency in the patent system -- R&D gap for neglected tropical
diseases (NTDs) as market and moral failures -- incentives to innovate -- emergence of
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private-public partnerships (PPPs) -- democratizing PPPs -- economic efficiency -- social
justice -- open-source innovation model.
Subject: Intellectual property--philosophy
Subject: Medical research
Subject: Pharmaceutical industry
SNIPER No.: 2013/00695
Author: Gray, Earl
Title: Rights of attribution for Ka Mate Haka
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 3, March 2013, pp.
200-202.
Summary: -- Ngaˉti Toa Rangatira Deed of Settlement of Historic Claims (initialled 30
August 2012) The Ngaˉti Toa Rangatira (Ngaˉti Toa) Deed of Settlement intends to
provide perpetual and enforceable rights of attribution for the haka Ka Mate -- haka are
traditional Māori dances, well known for performances by New Zealand's national rugby
team -- Attribution Legislation -- haka Ka Mate is a work that is in the public domain and
used by various persons in a range of commercial and non-commercial contexts.
Subject: Copyright ownership--New Zealand
Subject: Traditional knowledge--New Zealand
Subject: Traditional cultural expressions
SNIPER No.: 2013/01137
Author: Chen, Mike J.
Title: Risks and precautions
Source: World Trademark Review. No. 43, June-July 2013, pp. 114-115.
Summary: Licensing and assignment are becoming increasingly common in China -foreign corporations need to pay more attention to the legal risks inherent to these
activities -- litigation stemming from licensing and assignment activities is often the direct
consequence of ignorance of the relevant Chinese legislation -- legal framework -- trade
mark licence -- trade mark assignment -- licensing risks -- assignment risks.
Subject: Trade mark assignment--China
Subject: Intellectual property licensing--China
SNIPER No.: 2013/00863
Author: Baggs, Simon
Title: Role model
Source: Intellectual Property Magazine. April 2013, pp. 42-43.
Summary: United Kingdom government published its response to informal consultation
on the role of the UK Intellectual Property Office (IPO) -- proposals for the future role of
the IPO -- focus on innovation and growth -- annual reporting proposal -- improved
evidence base for policy making -- interaction between intellectual property and
competition.
Subject: Intellectual property industry--United Kingdom
SNIPER No.: 2013/01101
Author: Grabiak, Ewa
Title: The role of trademarks in cross-border trade
Source: IPR Helpdesk Bulletin. No. 9, April-June 2013, pp. 5-6.
Summary: Effective branding requires a solid and well prepared strategy -- use by smallmedium enterprises -- extensive analysis of the market -- scope of geographic protection -
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- national, European or international protection -- Office of Harmonization in the Internal
Market (OHIM) developed tools to enable extensive searching of the European Trade
Mark and Designs Network (TMDN) -- assistance with international registration -importance of a complete search.
Subject: Trade mark registration--Europe
Subject: International trade
SNIPER No.: 2013/01143
Author: Dudek-Urbanowicz, Izabella
Title: A route to better business relationships
Source: World Trademark Review. No. 43, June-July 2013, pp. 126-127.
Summary: Licence agreements under Polish law -- licence types -- duration of protection
-- immediate termination -- payment and transfer issues -- infringement -- applicable law.
Subject: Intellectual property licensing--Poland
Subject: Intellectual property assignment--Poland
SNIPER No.: 2013/00141
Author: Barazza, Stefano
Title: Secondary liability for IP infringement: converging patterns and approaches in
comparative case law
Source: Journal of Intellectual Property Law and Practice. Vol. 7 No. 12, December 2012,
pp. 879-889.
Summary: Direct, indirect or joint liability -- theoretical approaches to secondary liability -Commonwealth countries: the doctrine of authorisation -- United States: contributory and
vicarious liability -- Europe: civil liability and Störerhaftung -- China and Japan: negligence
and control-- use of goods and services provided by third parties -- how different
jurisdictions have dealt with indirect liability through an examination of the perimeter of the
notion of secondary liability -- relevant issues and solutions adopted by the courts -- case
law shows a focus on three key elements: nature of the services of goods in question -knowledge and intent of the third parties -- duty of care imposed upon them -- suggests a
more thorough evaluation of objective factors (duty of care, causation and proximity) -could provide a more uniform and predictable interpretation of secondary liability -ensuring effective protection of IP rights.
Subject: Intellectual property infringement--liability
SNIPER No.: 2013/00686
Author: Buchan, Robert
Title: Security for costs against foreign claimant in Scottish patent infringement
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 3, March 2013, pp.
184-185.
Summary: Patent infringement in Scotland against a foreign patent owner -- Total
Containment Engineering Limited v Total Waste Management Alliance Limited [2012]
CSOH 163, 6 September 2012 -- TCE did not have sufficient funds to pay an award of
costs against it in the event it was unsuccessful in the action -- matter considered under
Scots common law -- patented technology not exploited commercially -- foreign
companies should not be treated differently from UK registered companies when it came
to deciding whether an order for caution was required -- financial position of both parties
and in particular the claimant kept in mind and assessed throughout the litigation.
Subject: Patent infringement--Scotland
Subject: Patent litigation--case law--Scotland
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SNIPER No.: 2013/01120
Author: Clover, Sara-Jayne
Title: The shape of things to come: the next 18 months in trademarks
Source: World Trademark Review. No. 43, June-July 2013, pp. 27-38.
Summary: Trends and developments to watch in the trade mark landscape -- nonintellectual property (IP) organisations set to shape the future of trade mark practice -national trade mark offices to watch -- political movers and shakers -- IP organisations
look ahead.
Subject: Trade marks--trends
Subject: Intellectual property industry--trends
SNIPER No.: 2013/01154
Author: Freeland, Rowan
Title: Should you opt out of the Unified Patents Court?
Source: Managing Intellectual Property. No. 228, April 2013, pp. 24-28.
Summary: Potential advantages of new unitary patent and its court -- flexible system -takes some of the best elements of French, English and German practice -- could be
cheaper than national proceedings -- some industries likely to opt out -- pharmaceutical
industries likely to opt out to begin with out of fear of having important patents knocked out
across all the signatory states -- they may opt back in when they want to bring litigation
themselves -- opting in and out is constrained by ongoing litigation -- competitors may
launch national or Unified Patent Court (UPC) proceedings to prevent such tactics.
Subject: Patent litigation--procedure--Europe
Subject: Patent systems--reform--Europe
SNIPER No.: 2013/00864
Author: Knight, David
Title: Signature moment
Source: Intellectual Property Magazine. April 2013, pp. 44-46.
Summary: Agreement on a Unified Patent Court (UPC) signed by the majority of the
European Union (EU) member states -- main changes brought by the new European
package -- translation requirements -- transitional arrangements -- the courts -composition of the courts -- language of proceedings -- the judges -- references to the
Court of Justice of the European Union -- procedure before the UPC -- concerns -- what
patent owners should be doing.
Subject: Harmonisation of laws--Europe
Subject: Patents--reform--Europe
SNIPER No.: 2013/01199
Author: Hinchliffe, Sarah
Title: So, you've created an app...
Source: Internet Law Bulletin. Vol. 16 No. 1, April/May 2013, p. 14-16.
Summary: Trade mark infringement in the context of apps -- how apps works -developers to protect their ideas through trade marketing an app -- patents -- copyright -establishing jurisdiction -- lawyers should perform appropriate searches to ensure the
brands and technology incorporated into the app do not infringe the IP rights of third
parties -- privacy considerations different depending on the particular general descriptive
category of app -- confusion surrounding trade mark classification of apps.
Subject: Trade mark infringement--computer-related inventions
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Subject: Trade mark enforcement--information technology industry
Subject: Legal jurisdiction
SNIPER No.: 2013/01205
Author: Geiger, Christophe
Added author: Max-Planck-Institut für Immaterialgüter- und Wettbewerbsrecht
Title: The social function of intellectual property rights, or how ethics can influence the
shape and use of IP law
Source: Max Planck Institute for Intellectual Property and Competition Law Research
Paper. No. 13-06, 4 March 2013.
General Note: Also published in: Dinwoodie, G. B. (ed.), Intellectual Property Law:
Methods and Perspectives, Cheltenham, U.K.: Edward Elgar, 2014.
Summary: Social functions of intellectual property rights -- social function of law and
property rights -- implementing the social functions of IP rights -- legislative
implementation -- judicial implementation -- ability of social function to restrain excessive
IP tendencies.
Subject: Intellectual property--social aspects
SNIPER No.: 2013/00868
Author: Fogarty, Simon
Title: Strike a blow
Source: Intellectual Property Magazine. April 2013, pp. 52-53.
Summary: Copyright Tribunal’s first decision under New Zealand's controversial 'threestrikes' file-sharing legislation -- Recording Industry of New Zealand (RIANZ) -- hailed the
decision as a win for the music industry -- groups like Tech Liberty say the system is
flawed -- account holders who do not know what has happened are paying the price -how the system works -- accessing the penalties -- is the system working?
Subject: Copyright infringement--New Zealand
Subject: Damages--New Zealand
SNIPER No.: 2013/00934
Author: Kuilen, Aalt van de
Title: Successful European oppositions: analysis for the patent information professional
Source: World Patent Information. Vol. 35 No. 2 June 2013, pp. 126-129.
Summary: European patent oppositions analysed by number opposed and by number
revoked -- oppositions also analysed by technical area and by reasons for revocation -found that oppositions in the pharmaceutical area are the most common -- inventive step,
followed by novelty, are the main reasons for opposition.
Subject: Patent opposition--analysis--Europe
SNIPER No.: 2013/00694
Author: Montagnon, Rachel
Title: Suing under sui generis rights: getting closer to off-shore servers
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 3, March 2013, pp.
197-200.
Summary: Infringement of sui generis database rights -- Case C173/11 Football Dataco
Ltd, Scottish Premier League Ltd, Scottish Football League, PA Sport UK Ltd v Sportradar
GmbH, Sportradar AG, Court of Justice of the European Union, 18 October 2012 -- data
is uploaded from a database in Member State A which is protected by sui generis rights in
Member State B -- sent to the computer of a person in Member State B at that persons
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request, for the purposes of storage in that computers memory and display on its screen -this constitutes an act of 're-utilization' of the data by the person sending it -- CJEU found
the method of distribution irrelevant -- Article 7 of Database Directive 96/9.
Subject: Database rights--case law--Europe
Subject: Legal jurisdiction
Subject: Copyright infringement--case law--Europe
SNIPER No.: 2013/00931
Author: Hynynen, Jouni
Title: Supporting invention and innovation in Central Finland: inspiring IP awareness
Source: World Patent Information. Vol. 35 No. 2 June 2013, pp. 105-109.
Summary: Problems of IP awareness for small and medium sized enterprises (SMEs) in
Central Finland region -- case study on existing levels of IP awareness showed extent of
problem -- solutions explained -- included production of single page guide and other
education aids -- help users to focus on link between key business activities and the value
of IP.
Subject: Intellectual property awareness--case studies--Finland
Subject: Intellectual property education--Finland
SNIPER No.: 2013/00687
Author: Crowne-Mohammed, Emir Aly
Title: Supreme Court of Canada voids Viagra patent for insufficient disclosure
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 3, March 2013, pp.
185-187.
Summary: Patent disclosure -- Teva Canada Ltd. v Pfizer Canada Inc, 2012 SCC 60,
Supreme Court of Canada, 8 November 2012 -- unanimously ruled that Pfizer’s patent for
Viagra was void for insufficient disclosure -- amended law on sufficiency or patent
disclosure -- nature of the invention -- disclosure of utility and sound prediction -examination of the patent as a whole -- court's policy centred approach -- patentees to
provide a full and complete disclosure -- decision re-establishes the balance between the
interests of patentees and the public.
Subject: Patent disclosure--case law--Canada
Subject: Patent validity--case law--Canada
Subject: Hashim, Mohamed R.
SNIPER No.: 2013/00880
Author: Buckworth, Michael
Title: Taking ownership
Source: Intellectual Property Magazine. April 2013, pp. 78-79.
Summary: Problems involving intellectual property rights (IPR) and employment issues
arise frequently -- most common IPR relevant to employers -- statutory position as regards
ownership of such rights -- copyright -- moral rights -- patents -- database rights -contractors -- ancillary matters.
Subject: Intellectual property ownership
Subject: Intellectual property assignment
SNIPER No.: 2013/01009
Author: Norgard, Jessica
Title: The tale of two hotel groups: when homestay is the best policy
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 2, February 2013, pp. 36-
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37.
Summary: Trade mark registration -- Federal Court of Australia decision -- Millennium &
Copthorne International Limited v. Kingsgate Hotel Group Pty Ltd, Millennium &
Copthorne International Limited (MCIL) -- Kingsgate trade mark -- opposition proceedings
-- appeal to the Federal Court -- deceptive similarity -- prior use -- honest concurrent use - reputation.
Subject: Trade mark infringement--case law--Australia
Subject: Hospitality industry--Australia
SNIPER No.: 2013/01060
Author: Lesicko, Christine
Title: Tattoos as visual art: how body art fits into the Visual Artists rights Act
Source: IDEA: the Intellectual Property Law Review. Vol. 53 No. 1, 2013, pp. 39-62.
Summary: Tattoos in America -- intersection of tattoos and copyright law -- are tattoos
copyrightable -- who owns the rights to a tattoo -- is a tattoo a "work made for hire" -- what
rights does the owner have in the tattoo -- Visual Artists Rights Act (VARA) (United States)
-- what kind of work does VARA cover -- remedies provided by VARA -- how do tattoos fit
into VARA -- fair use, constitutionality and enforcement -- alternative protections for artists.
Subject: Copyright owners' rights--United States
Subject: Moral rights--United States
Subject: Artistic works
SNIPER No.: 2013/01134
Author: Little, Trevor
Title: A team effort: avoiding trademark troubles in advertising campaigns
Source: World Trademark Review. No. 43, June-July 2013, pp. 102-109.
Summary: Experts from four jurisdictions, China, Denmark, Sweden and the United
States discuss the trade mark issues involved in advertising -- marketing people
consulting with trade mark experts -- administrative bodies regulating advertising -controls in relation to the advertisement of particular types of goods -- trade mark
infringement when a third party mark is used -- comparative advertising -- misleading
and/or deceptive advertising -- registration of slogans -- specific trade mark issues raised
by advertising online under national law -- remedies available -- use of competitors' trade
marks as keywords.
Subject: Marketing
Subject: Trade mark owners' rights
SNIPER No.: 2013/01037
Author: Stevens, Ashley J.
Title: Technology transfer's twenty-five percent rule
Source: Les Nouvelles. Vol. 48 No. 1, March 2013, pp. 44-51.
Summary: Intellectual property licensing -- 25% rule -- Goldscheider principle -- Uniloc
USA and Uniloc Singapore Pty Ltd v. Microsoft Corporation -- Court of Appeal of the
Federal Circuit decision -- licensing success rates (LSR) in the U.S -- outside the U.S. -low overall licensing success rate -- long lead times from invention to revenues -commercialisation of academic research -- results of the Association of University
Technology Managers (AUTM) annual licensing activity survey (ALAS) for U.S. and
Canada -- analysis of the practices of technology transfer offices (TTOs).
Subject: Technology transfer--education and training industry
Subject: Intellectual property licensing--education and training industry
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SNIPER No.: 2012/01533
Author: Dutfield, Graham
Added author: Quaker United Nations Office
Title: Thinking aloud on disclosure of origin
Source: Occasional Paper (Quaker United Nations Office). No. 18, October 2005
Summary: Disclosure of origin -- voluntary disclosure -- mandatory disclosure -- proof of
legal acquisition -- practical advantages of linking the patent right to the legality of
acquisition of the relevant resources or knowledge -- controversial biodiversity cases -Hoodia -- non-referral to the traditional knowledge -- relevant prior art -- neem patents -Enola bean -- should not have been granted due to lack of novelty -- rosy periwinkle -compatibility with TRIPS.
Subject: Disclosure of origin
Subject: Bioprospecting
SNIPER No.: 2013/01139
Author: Kabisch, Andreas
Title: Time to evaluate if you are still in control
Source: World Trademark Review. No. 43, June-July 2013, pp. 118-119.
Summary: German Federal Court of Justice -- held that a sub-licence agreement can
survive the termination of the main licence agreement -- right owners need to take
contractual precautions when drafting future licence agreements if they allow licensees to
sub-license -- re-evaluate existing licence agreements -- make necessary amendments in
order to reclaim control of their intellectual property rights exploitation chain -- Federal
Court's decisions -- impact that these decisions will have on (sub-) licence agreements -actions to take for existing and future licence agreements.
Subject: Intellectual property licensing--Germany
Subject: Brand management--Germany
SNIPER No.: 2013/00994
Author: Qian, Weimin
Title: Tips on patent filing
Source: Managing Intellectual Property. China IP Focus, 2013, pp. 74-78.
Summary: Amendments to China's Patent Law have had a great impact on prosecution
practice -- patent application document preparation -- application and examination
procedures -- requirements for applications for patents using genetic resources and for
utility models and designs -- reexamination and invalidation procedures -- fees -compulsory licences for the exploitation of patents -- inventors' rewards and remuneration
-- patent enforcement -- provisions concerning international applications -- prosecution
strategies -- dual filing -- voluntary amendments -- response to office actions -- divisional
applications.
Subject: Patent applications--China
Subject: Patent litigation--China
SNIPER No.: 2013/01196
Author: Maguire, Jackie
Title: TLC for IP
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of
Patent Agents. Vol. 42 No. 3, March 2013, pp. 130-132.
Summary: Strategic approach to IP -- demand for commercial and strategic IP services -investment and IP management -- technical, legal and commercial expertise -- supporting
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the sale and purchase of IP portfolios -- IP due diligence -- seminal patent evaluation -- IP
landscaping -- strategic portfolio management.
Subject: Value of intellectual property
SNIPER No.: 2013/00861
Author: Birchall, David
Title: To market, to market
Source: Intellectual Property Magazine. April 2013, pp. 37-38.
Summary: Consequences where two parties simultaneously launch products with the
same brand name -- assess the proposed mark at the outset -- is it free to use? -obtaining a monopoly over the mark -- consideration of non-English speaking markets -geographical issues -- domain name searching -- application process.
Subject: Trade mark registration
Subject: Brand management
SNIPER No.: 2013/00932
Author: Schütz, Catherine A.
Title: Toxicity data of therapeutic nanoparticles in patent documents
Source: World Patent Information. Vol. 35 No. 2 June 2013, pp. 110-114.
Summary: Patents as a valuable source for toxicity data on therapeutic nanoparticle
systems -- statistical assessment of the toxicity information in patent documents -- found
patent documents as an accessible alternative source for early information on toxicity -high proportion of toxicity data provided by patent applicants from academic institutions -data allows researchers and government agencies to assess in advance possible impact
of new nanoparticle based drugs.
Subject: Patent specifications--nanotechnology industry
Subject: Pharmaceutical industry
SNIPER No.: 2012/01529
Author: Abbott, Frederick M.
Added author: Quaker United Nations Office
Title: Trade diplomacy, the rule of law and the problem of asymmetric risks in TRIPS
Source: Occasional Paper (Quaker United Nations Office). No. 11, September 2003.
General Note: Presented at 'IPRs, Trade and Challenges for Development' Cancun Trade
and Development Symposium, held in connection with the WTO Fifth (Cancun) Ministerial
Conference.
Summary: Trade diplomacy -- developing countries -- Doha Declaration -- concerns on
implementation -- Paragraph 6 agreement -- safeguards to protect the right and interests
of the less economically and politically powerful members -- potential abuses by the patent
holder.
Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994)
Subject: International trade--developing countries
SNIPER No.: 2012/02866
Author: Griffiths, Andrew
Title: Trade marks and responsible capitalism
Source: IIC: International Review of Intellectual Property and Competition Law. Vol. 43
No. 7, 2012, pp. 798-824.
Summary: Trade marks as signifiers of brands -- whether they increase the economic
incentives that undertakings have to behave in accordance with standards associated with
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corporate social responsibility (CSR) and create pressure towards CSR -- economic case
for CSR -- trade mark's "economic guarantee" about product quality should extend to
cover organisational behaviour -- limitations and shortcomings in clarity and strength of
this guarantee -- need to ensure that trade marks provide a reliable basis for linking
organisational behaviour to marked products -- maximise legal ability of trade mark
owners to control behaviour attributed to marked products -- maximise pressure that trade
marks can generate in favour of CSR.
Subject: Trade marks--economics
Subject: Trade marks--philosophy
Subject: Branding--social aspects
SNIPER No.: 2013/01117
Author: Rüssli, Stefan
Title: Trademark toolkit: an innovative approach to financing
Source: World Trademark Review. No. 43, June-July 2013, p. 10.
Summary: Brands are among a company's most valuable assets -- offering them as
collateral against corporate financing -- sale and leaseback as a financing option -sourcing potential financial partners -- contract must-haves.
Subject: Brand management
Subject: Finance
SNIPER No.: 2013/00865
Author: Wood, Ian
Title: True colours shining through
Source: Intellectual Property Magazine. April 2013, pp. 47-78.
Summary: Colours as identifiers -- Christian Louboutin's lacquered red sole on footwear -impact of Nestlé v Cadbury on colour marks -- importance of ensuring that the description
of a mark is clear and easily intelligible -- decision in Seven Towns -- brand names and
other material superimposed on a colour mark.
Subject: Colour marks--case law--Europe
Subject: Trade mark registration--Europe
SNIPER No.: 2013/01110
Author: Lundqvist, Björn
Title: "Turning government data into gold": the interface between EU competition law and
the public sector information directive: with some comments on the Compass case
Source: IIC: International Review of Intellectual Property and Competition Law. Vol. 44
No. 1, 2013, pp. 79-95.
Summary: Competition law -- Court of Justice of the European Union (CJEU) decision
Compass-databank GmbH v. Republik Österreich, Opinion of Advocate General
Jääskinen -- when public sector bodies should be considered "undertakings" under EU
competition law -- public sector information (PSI) -- whether distribution of PSI for
remuneration is an economic activity or not -- PSI Directive -- facilitating the commercial
reuse of PSI held in databases on private markets -- interface between PSI legislation and
general EU competition law -- three-step logic.
Subject: Competition law--Europe
Subject: Knowledge industry--law and legislation--Europe
SNIPER No.: 2013/00139
Author: Macedo, Charles R.
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Title: Understanding patent eligibility of new technology in the United States
Source: Journal of Intellectual Property Law and Practice. Vol. 7 No. 12, December 2012,
pp. 865-871.
Summary: Patent eligibility -- United States Patent and Trademark Office and US Courts
to decide whether each new class of technology should be classified as patent-eligible
subject matter under US patent law -- challenges presented with the development of
computers and software, financial innovation, the Internet and e-commerce applications -patent statutes traditionally given broad scope to include almost anything as patent eligible
subject matter -- three judicial exceptions: laws of nature, natural phenomena and abstract
ideas -- difficulty in developing a consistent approach distinguishing patents pre-empting
these patent-ineligible fundamental principles from patent-eligible inventive applications
using these fundamental principles -- US Supreme Court decision in Mayo v Prometheus - tips and best practices on how to navigate determining patent-eligibility.
Subject: Patentability--United States
SNIPER No.: 2013/01190
Author: Johnson, Alan
Title: Unitary Patents and the Unified Patent Court: Part 3: forum shopping and the
jurisdictional battles
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of
Patent Agents. Vol. 42 No. 3, March 2013, pp. 114-116.
General Note: Third article in a series of four. See also: 2013/00737 (part 1), 2013/00970
(part 2) and 2013/01281 (part 4).
Summary: Unified Patents Court (UPC) -- forum shopping -- different judicial constitution
of panels in the different Divisions -- majority of non-local judges -- approach to optimal
bifurcation -- speed of matters getting to trial -- general attitude in terms of pro-patentee or
anti-patentee (especially the approach to obviousness) -- different approaches to the grant
of injunctions, both final and primary -- intention of legislators to create a simpler system -scope for more action and tactical manoeuvring.
Subject: Forum shopping--Europe
Subject: Patents--law and legislation--Europe
Subject: Patents--reform--Europe
Subject: Litigation--reform--Europe
SNIPER No.: 2013/00701
Author: Hartwig, Henning
Title: Unregistered and registered community design rights: further guidance expected
from CJEU
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 3, March 2013, pp.
241-244.
Summary: Community design rights -- Garden Pavilion, Case No I ZR 74/10,
Bundesgerichtshof, Germany, Decision of 16 August 2012 Germany’s Supreme Court
(Bundesgerichtshof) -- clarification from the Court of Justice of the European Union
(CJEU) on standards for establishing, challenging and enforcing unregistered and
registered Community design rights -- practical significance -- how to determine the place
of the infringement -- 'unitary' interpretation.
Subject: Community design--case law--Europe
Subject: Industrial design infringement--case law--Germany
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SNIPER No.: 2013/01136
Author: Chan, Brigitte
Title: Use issues in Canada
Source: World Trademark Review. No. 43, June-July 2013, pp. 112-113.
Summary: Definition of trade mark 'use' -- recent case law -- Trademarks Act makes no
distinction between primary, incidental or ancillary services -- whether use of a trade mark
exists in the absence of a physical retail store -- use of trade mark notices is
recommended -- licensing requirements -- current Canadian law -- licence agreement is
recommended -- owner should take steps actively to control the licensee's use of the mark
-- ensure that such steps are documented and can be referred to in evidence -- use of a
notice identifying the owner of a mark and highlighting the fact that the use is under
licence -- Spirits International BV v BCF SEN CRL.
Subject: Trade mark use--case law--Canada
Subject: Intellectual property licensing--Canada
SNIPER No.: 2012/02868
Author: Lee, Yin Harn
Title: UsedSoft GmbH v. Oracle International Corp (case C-128/11): sales of "used"
software and the principle of exhaustion
Source: IIC: International Review of Intellectual Property and Competition Law. Vol. 43
No. 7, 2012, pp. 846-853.
Summary: Landmark decision of the Court of Justice of the European Union (CJEU) -interpreted the principle of exhaustion of the copyright holder's exclusive right to
reproduction under the Software Directive in progressive manner -- permits first acquirers
of software delivered through digital distribution channels to resell their copies of the
software -- facts of the case -- exhaustion of the copyright holder's distribution right -acquirer of a "used" software licence as a "lawful acquirer" -- analysis of the decision –
significance.
Subject: Copyright exhaustion--case law--Europe
Subject: Copyright owners' rights--information technology industry--Europe
SNIPER No.: 2013/01064
Author: Maas, Andrew J., Esq.
Title: Valuation & assessment of intangible assets, and how the America Invents Act will
affect patent valuations
Source: Journal of the Patent and Trademark Office Society. Vol. 94 No. 4, 2012, pp.
300-329.
Summary: Patents, copyrights, trade marks and trade secrets: how they create value -advantages and disadvantages of patent protection -- additional considerations -concepts and roles of intangible asset valuation in free enterprise -- purposes of patent
valuation -- America Invents Act -- prior commercial use -- costs -- potential risks and prior
art -- case studies Google and Motorola, Walk Disney, Sabre and American Airlines and
DuPont -- adjustments to current patent valuation approach -- inventorship -- potential
undermining of patent value due to the prior commercial use defence -- likely increase in
patent cost -- potential reduction in risk.
Subject: United States. Leahy-Smith America Invents Act
Subject: Patents--economics
Subject: Intellectual property law--reform--United States
Subject: Brand management
Subject: Value of intellectual property
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SNIPER No.: 2013/01158
Author: Jahja, Prudence
Title: What Indonesia needs to do to join the world IP community
Source: Managing Intellectual Property. No. 228, April 2013, pp. 40-43.
Summary: Association of Southeast Asian Nations (ASEAN) member states set to form
an ASEAN Economic Community -- single harmonised market similar to the European
Union (EU) -- members of the new union must modernise their intellectual property (IP)
regimes -- comply with specific targets -- accession to the Madrid Protocol -- Patent
Cooperation Treaty -- challenges for Indonesia -- must make substantive legal changes -improve administrative procedures -- unclear whether Indonesia and other ASEAN
countries will be able to make the necessary changes by the deadline.
Subject: Intellectual property--reform--Indonesia
Subject: Trade marks--law and legislation--Indonesia
SNIPER No.: 2013/00967
Author: O'Callaghan, Tim
Title: Who copied?: copyright infringement liability in the digital age
Source: Internet Law Bulletin. Vol. 15 No. 10, March 2013, pp. 190-193.
Summary: Liability for copyright infringement unclear in the digital age -- growing
requirements of users for "on-demand" entertainment -- Australian Copyright law statutory
framework -- peer-to-peer file sharing -- BitTorrent -- Cooper v Universal Music Australia
Pty LtP and Universal Music Australia Pty Ltd v Sharman License Holdings Ltd (the Kazaa
case) -- streaming -- Megaupload -- iiNet landmark case -- Australian copyright law not
suited to enforcing the rights of copyright owners in respect to widespread infringements
arising out of peer-to-peer sharing -- options available to holders of copyright.
Subject: Copyright infringement--case law--Australia
Subject: Carriage service providers--liability--Australia
Subject: Electronic copyright--Australia
SNIPER No.: 2013/01119
Author: Ellis, Jack
Title: Working overtime: trademark counsel's efforts to push brands up the boardroom
agenda
Source: World Trademark Review. No. 43, June-July 2013, pp. 14-24.
Summary: WTR Global Benchmarking Survey -- continued budgetary pressures -personnel levels have remained relatively constant -- new hires down on last year -greater interaction between trade mark departments and senior management -- portfolio
valuations --portfolio rationalisation -- proper use of trade marks -- enforcement and
policing in the online space -- social media platforms and trade mark misuse -- roll-out of
new generic top-level domains (gTLDs).
Subject: Intellectual property industry--statistics
Subject: Value of intellectual property
SNIPER No.: 2013/01156
Author: Barraclough, Emma
Title: Your guide to China's players
Source: Managing Intellectual Property. No. 228, April 2013, pp. 30-35.
Summary: Profiles of some of the most important Chinese companies -- what they do -how they protect their rights -- using data from the United States Patent and Trademark
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Office (USPTO) -- companies from China that are granted the most US patents -- patents
granted by State Intellectual Property Office of the People's Republic of China (SIPO) to
applicants from China and Taiwan -- Semiconductor Manufacturing International
Corporation (SMIC) -- Huawei -- interview with Song Liuping, vice-president and head of
legal affairs.
Subject: Companies--China
Subject: Intellectual property rights--China
SNIPER No.: 2013/00689
Author: Neophytou, John Peter
Title: ZEBEXIR and ZEBINIX: assessing the likelihood of confusion
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 3, March 2013, pp.
189-190.
Summary: Likelihood of confusion between two conflicting marks -- Case T-366/11 BialPortela & Ca SA v OHIM, the General Court of the European Union, 9 October 2012
Annulling a decision of the Board of Appeal of OHIM, the General Court of the European
Union has ruled on the likelihood of confusion between the conflicting marks ZEBEXIR
and ZEBINIX -- likelihood of confusion must be assessed globally according to the
relevant public's perception of the signs and the good and services -- decisive factors not
sufficient.
Subject: Community Trade Mark
Subject: Confusing similarity--case law--Europe
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