SNIPER Bulletin
Searchable Networked Intellectual
Property Electronic Resource
November 2014
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ISSN: 2202-753X
SNIPER No.: 2014/01853
Author: Chatterton, Edward
Author: Lam, Horace
Title: Amendments to China's Copyright Law and practical implications for rights owners
Source: World Intellectual Property Report. Vol. 28 No. 9, September 2014, pp. 32-34.
Summary: Fourth draft of China's new Copyright Law published for public comment on 6 June
2014 -- aims to rationalize existing Copyright Law and bring it into line with other developed
copyright laws around the world -- key changes -- copyright created in employment -- safe
harbours for ISPs -- licensing of copyright -- new forms of copyright work proposed -- fair use -damages for infringement -- administrative fines and investigation powers -- practical
consequences for rights owners
Subject: Copyright--law and legislation--China
SNIPER No.: 2014/01848
Author: Kim, Yee Kyoung
Author: Lee, Keun
Author: Park, Walter G.
Author: Choo, Ki-Neung
Title: Appropriate intellectual property protection and economic growth in countries at different
levels of development
Source: Research Policy. Vol. 41 No. 2, March 2012, pp. 358-375.
Summary: Comparison of the roles of patent rights and utility model laws in the economic growth
of over 70 countries at different levels of economic development -- variations in patent rights
explain the innovation and economic growth of high-income economies -- variations in utility model
laws explain those of middle-to-low income economies, controlling for other factors -- utility model
innovations contribute to firm growth and innovation when firms are technologically lagging -otherwise, they contribute insignificantly when firms are technologically more advanced.
Subject: Minor patents--economics
Subject: Innovation (Technological)
SNIPER No.: 2014/01866
Author: Craven, Matthew
Author: Wheelahan, Frances
Title: Australia issues revised franchising laws for comment
Source: Asia IP: Protecting your Intellectual Assets. Vol. 6 No. 6, July 2014, pp. 46-48.
Summary: Draft of the revised Franchising Code of Conduct and a bill to amend relevant
franchising provisions of the Competition and Consumer Act 2010 (Cth) released for public
comment by the Australian government in April 2014 -- significant changes -- boosts rights of
franchisees -- removes some "red tape" requirements -- additional disclosure requirements will
likely increase compliance burden on franchisors -- franchisors and franchisees potentially liable
for civil penalties up to $A51,000 for breaches of certain sections of the Code -- new laws
proposed to take effect from January 1, 2015.
SNIPER Bulletin – November 2013
Page 1 of 33
Subject: Franchising--law and legislation--Australia
SNIPER No.: 2014/01850
Author: Chalk, Peter
Author: D'Aloisio, Stuart
Title: Australian Court affirms finding of infringement and validity over Bayer contraceptive drug
Source: World Intellectual Property Report. Vol. 28 No. 9, September 2014, pp. 3-4.
Summary: Generic Health Pty Ltd v. Bayer Pharma Aktiengesellschaft -- decision of the Full Court
of the Federal Court -- dismissed appeal in patent infringement and validity case about Bayer's oral
contraceptive tablet, Yasmin -- Bayer's patent found valid and infringed by generics manufacturer
Generic Health -- facts of the case -- main ground of appeal was that the primary judge erred in
finding that the claimed invention was not obvious -- novelty and experimental evidence -implications for Generic Health
Subject: Patent infringement--case law--Australia
Subject: Pharmaceuticals--case law--Australia
SNIPER No.: 2014/01870
Author: Griffin, Murray
Title: Australian court rejects US Supreme Court view, holds gene patent valid
Source: World Intellectual Property Report. Vol. 28 No. 10, October 2014, pp. 3-4.
Summary: Full Federal Court decision in D'Arcy v. Myriad Genetics Inc -- unanimously rejected an
appeal against an Australian patent issued to Myriad Genetics Inc for BRAC1 -- found that an
isolated human gene is patentable -- decision contrary to US Supreme Court ruling which
concluded that the genetic material was a "product of nature" -- High Court appeal likely -- calls for
legislative change to the Patents Act 1990
Subject: Gene patents--case law--Australia
SNIPER No.: 2014/01869
Author: Griffin, Murray
Title: Australian Trade Marks Office rules for Facebook in "Friendbook" fight
Source: World Intellectual Property Report. Vol. 28 No. 10, October 2014, p. 3.
Summary: Australian Trade Marks Office decision in Facebook, Inc v. Northsword Pty Ltd -successful opposition by Facebook to Northsword's application for registration FriendBook as a
trade mark -- Trade Marks Act 1995 (Cth) s 60 -- trade mark similar to a trade mark that has
acquired a reputation in Australia -- likely to deceive or cause confusion -- use of unusual 'Book"
suffix in the mark
Subject: Confusing similarity--case law--Australia
SNIPER Bulletin – November 2013
Page 2 of 33
SNIPER No.: 2014/01864
Author: Chan, Johnny
Title: Battle cry for IP courts
Source: Asia IP: Protecting your Intellectual Assets. Vol. 6 No. 6, July 2014, pp. 31-38.
Summary: IP practitioners facing and increasing amount of IP litigation -- existence of specialist IP
courts, tribunals or alternative dispute resolution forums -- discussions with lawyers from countries
in Asia -- Australia, India, Japan, Malaysia, Singapore, New Zealand, China, Pakistan, Indonesia -whether specialised IP courts available -- amount of IP litigation increasing -- establishment of an
IP court might expedite hearing of IP cases -- costs and risks of establishing an IP court -- need for
qualified judges with relevant knowledge -- IP training -- increase awareness of IP -- the future of
IP courts -- existing specialist IP courts could serve as a role model to new courts.
Subject: Intellectual property litigation--Asia
SNIPER No.: 2014/00883
Author: Berman, Bruce M.
Title: Beauty is in the eye of the holder
Source: Intellectual Asset Management. No. 65, May-June 2014, p. 33.
Summary: Google's recent sale of Motorola Mobility's handset business to China's Lenovo -Google gets to keep most of the patents -- provides licences to Lenovo -- empowers another
Android handset maker in its battle with rivals Apple and Microsoft -- receives cash and stock to
mitigate the original cost of the Motorola Mobility purchase -- gets to retain Motorola's Advance
Research and Projects -- portfolios of branded technology companies are overvalued for any
number of reasons -- Kodak sale is a dramatic example of a disconnect between need and market
value -- important for stakeholders to comprehend the source and motivation of patent pricing.
Subject: Value of intellectual property
SNIPER No.: 2013/02835
Author: Cavelier, Ernesto
Title: A big step: Colombia's accession to the OECD
Source: World Intellectual Property Review. September-October 2013, pp. 130-131.
Summary: Colombia formally invited to open membership talks by the Organization for Economic
Cooperation and Development on May 30 2013 -- several multilateral agreements have been
entered into by Colombia including the Patent Cooperation Treaty (1970), WIPO Copyright Treaty
(1996), Trademark Law Treaty (1994) and the International Convention for the Protection of New
Varieties of Plants (1978) -- Trade marks legislation amended to include scent and sound marks,
regulate collective and certification marks and abolish mandatory registration of trade mark
licences IP protection strengthened through criminal laws
Subject: Intellectual property law--Colombia
Subject: Intellectual property rights--Colombia
SNIPER Bulletin – November 2013
Page 3 of 33
SNIPER No.: 2014/01720
Author: Nasto, Barbara
Title: Biotech patents surge from institutions off the beaten track
Source: Nature Biotechnology. Vol. 32 No. 8, August 2014, p. 708.
Summary: Report from patent analysis company IP Checkups shows large increase in number of
patents issued to universities in 2013 over 2012 -- number of specialized life-sciences patents
issued by the USPTO doubled -- trend towards issuing patents to universities that don't have high
profile research departments -- possible reasons -- more efficient processing and more examiners
at USPTO -- clearing backlog -- tech transfer and academics more aware of IP since the BayhDole Act -- America Invents Act provisions mean inventions are filed closer to when disclosed
Subject: Patents--biotechnology industry
Subject: Patents--education and training industry
SNIPER No.: 2014/01874
Author: Moscovici, Jason
Title: Canada Federal Court invalidates AstraZeneca patent for failure to soundly predict utility
Source: World Intellectual Property Report. Vol. 28 No. 10, October 2014, pp. 32-33.
Summary: Landmark ruling from Federal Court of Canada -- AstraZeneca Canada Inc v. Apotex
Inc -- found AstraZeneca Aktiebolag's patent for esomeprazole invalid for not meeting the declared
promised utility -- clarifies the issue of "proper disclosure' in the context of patent utility and sound
prediction in Canada -- facts of the case -- analysis of the decision
Subject: Patent utility--case law--Canada
Subject: Patent disclosure--Canada
SNIPER No.: 2014/01861
Author: Zmood, Julian
Title: Case note: Halal Certification Authority Pty Ltd v Scadilone Ltd [2014] FCA 614
Source: Australian Intellectual Property Journal. Vol. 25 No. 1, October 2014, pp. 49-54.
Summary: Recent decision in the Federal Court of Australia in Halal Certification Authority Pty Ltd
v Scadilone Ltd -- concerned the unauthorised use by the owners of two restaurants and a meat
wholesaler of the applicant's composite trade mark -- consisted of a round device with the word
halal (in Arabic) at its centre surrounded by the additional words "Halal Certification Authority
Australia" -- the trade mark is an ordinary trade mark and not a certification mark.
Subject: Trade marks--case law--Australia
Subject: Trade mark use--case law--Australia
SNIPER Bulletin – November 2013
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SNIPER No.: 2014/00882
Author: Ellis, Jack
Title: Change in practice
Source: Intellectual Asset Management. No. 65, May-June 2014, pp. 11-21.
Summary: Low quality patents -- term "patent quality" is open to wide interpretation -- overly broad
claims -- broad claims can be a hallmark of a top quality patent -- coming up with a method of
quantifying patent quality is a tough proposition -- Ocean Tomo Ratings (OTR) tables -- metrics
based on the notion that patents maintained by their owners for longer are of higher quality than
those which are abandoned -- full service firms -- genera practice firms -- patent-focused
specialists -- rethink of traditional patent counsel roles -- prosecution, litigation and transactional
capabilities all under one roof -- changing roles -- America Invents Act -- first to file -- possibility of
further legislative reform.
Subject: Patents--reform
Subject: Patents--statistics
SNIPER No.: 2014/01876
Author: Walz, Axel
Title: CJEU hears Huawei case on enforcement of standard essential patents
Source: World Intellectual Property Report. Vol. 28 No. 10, October 2014, pp. 38-40.
Summary: Court of Justice of the European Union (CJEU) has heard arguments in the case,
Huawei v. ZTE -- circumstances in which an application for injunctive relief may be prohibited
under Article 102 of the Treaty of the Functioning of the European Union (TFEU) -- important
question for patent owners whose technology is essential for implementation of technology
standards and for users of standardised technologies -- facts of the case -- basic rule that applying
for an injunction is not abusive nor anti-competitive -- injunctions excluded only under exceptional
circumstances -- arguments at the oral hearing before the CJEU -- CJEU Opinion due on 20
November 2014
Subject: Standards (Technical)--Europe
Subject: Injunctions--case law--Europe
SNIPER No.: 2014/01238
Author: Friedgut, Martin
Author: Caldwell, Amanda
Author: Heerey, Peter
Author: Cordiner, Tom
Author: Nash, Alan
Author: Reynolds, Simon
Title: Current developments: Australia
Source: Intellectual Property Forum. No. 97, June 2014, pp. 70-79.
Summary: IP Australia -- decommissioning of IP Lodgement Points -- changes in PCT fees -amendments to the Trade Marks Office Manual of Practice & Procedure -- new Australian
SNIPER Bulletin – November 2013
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International Trade Mark Application Form -- Phone Directories Company Australia Pty Ltd v
Telstra -- Seafolly Pty Ltd v Fewstone Pty Ltd -- Damorgold Pty Ltd v JAI Products -- Damorgold
Pty Ltd v ]AI Products (No 2) -- AstraZeneca AB v Alphapharm Pty Ltd -- Tjtler v Sevin -- Re
Bacchus Distillery Pty Ltd (Administrators Appointed) -- Bugatti GmbH v Shine Forever Men Pty
Ltd (No 2) -- Agapitos v Habibi -- Caffell & Falcon -- MPEG LA, LLC v Regency Media Pty Ltd -Warner-Lambert Company LLC v Apotex Pty Ltd.
Subject: IP Australia
Subject: Intellectual property--case law--Australia
SNIPER No.: 2014/01857
Author: Aristotelous, Philippos
Author: Supashis, Stavros
Title: Cyprus intellectual property rights box
Source: World Intellectual Property Report. Vol. 28 No. 9, September 2014, pp. 42-44.
Summary: Incentives and exemptions relating to investment in intellectual property -- intellectual
property rights box (IP box) -- introduced by the Cyprus government in May 2012 -- main features - 5-year amortisation period -- deduction of revenue from exploitation of IP rights -- tax exemption
of dividends resulting from IP activities -- deduction of profits on disposal of IP rights -- comparison
with other EU IP box regimes -- table of key differences -- Belgium, France, Hungary, Luxembourg,
Netherlands, Spain, UK -- claim that Cyprus is the clear European leader in all aspects of its IP
taxation regime -- offers lowest effective rate of tax -- includes widest range of IP assets -- imposes
fewest restrictions and limitations
Subject: Business taxation--Cyprus
Subject: Patents--economics--Cyprus
SNIPER No.: 2013/02837
Author: Vasilescu, Raluca
Title: Dancing to a different tune: the CJEU's approach to trademarks
Source: World Intellectual Property Review. September-October 2013, pp. 136-139.
Summary: Decision in February 2013 by the Court of Justice of the European Union may shake
conceptions of how 'solid' a trade mark registration is -- possible implications for national
procedures -- Article 9(1) of the Community Trademark Regulation -- wave of new applications
after the amended Trademark Law came into force in 2010 -- many very similar to older marks
already registered -- some made in bad faith -- opposition rates grew
Subject: Trade mark registration--Romania
Subject: Trade mark owners' rights--Romania
SNIPER No.: 2014/00888
Author: Gill, Erin-Michael
Title: The dominant players in the US patent landscape
SNIPER Bulletin – November 2013
Page 6 of 33
Source: Intellectual Asset Management. No. 65, May-June 2014, pp. 59-64.
Summary: United States Patent 100 -- dataset that identifies the entities owning the most granted,
in-force patents in the United States -- patent application growth rates -- a bibliometric measure of
the rate at which other companies are citing each portfolio – analysis of the updated data for 2013 - changes.
Subject: Patents--statistics--United States
SNIPER No.: 2014/01856
Author: Ting, Cathy C. W.
Title: Draft amendment to Taiwanese Copyright Act
Source: World Intellectual Property Report. Vol. 28 No. 9, September 2014, pp. 38-41.
Summary: First draft of the amendment to the Copyright Act published by the Taiwan Intellectual
Property Office of the Ministry of Economic affairs (TIPO) on 3 April 2010 -- key provisions -consolidating and revising intangible rights in a work -- ownership of rights in employee works,
audiovisual works -- moral rights for promoting circulation and exploitation -- protection of
performers and sound recordings -- limitations and exceptions to economic rights in a work -compulsory licensing where the identity of the economic rights holder is unknown -- border control
measures -- review of inappropriate criminal liabilities -- whether the copyright term should be
extended -- discussion on recovery of a copyright registration system
Subject: Copyright--law and legislation--Taiwan
SNIPER No.: 2014/01871
Author: Thomas, Christian R.
Title: Effective use of Community Designs
Source: World Intellectual Property Report. Vol. 28 No. 10, October 2014, pp. 24-27.
Summary: Community Design and harmonised design laws of the EU member states increasingly
popular in the field of prosecution and law enforcement -- design can be used effectively only if the
scope of protection is clearly defined -- need to know which general conditions must be fulfilled
when filing a design application and which requirements must be met by the applicant -- novelty -individual character -- novelty and individual character assumed -- clarity of application -- graphic
representation of a design -- broken lines and boundaries -- neutral background -- taking
advantage of multiple applications -- complex products -- details of products -- sets of articles -variant articles -- enforcing design rights -- procedural principles - claims on the merits of
proceedings -- preliminary proceedings
Subject: Community Design
Subject: Industrial design applications--Europe
Subject: Industrial design registrability--Europe
SNIPER No.: 2014/01531
Author: Headdon, Toby
Title: An epilogue to Svensson: the same old new public and the worms that didn't turn
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 8, August 2014, pp. 662-668.
SNIPER Bulletin – November 2013
Page 7 of 33
Summary: An examination of the Court of Justice of the European Union (CJEU) decision on
hyperlinks and communication to the public and the current state of this area of law -- debate
around copyright and the internet -- hyperlinks and communication to the public -- Svensson
decision -- other decisions involving linking -- C-More Entertainment -- BestWater -- hyperlinks and
communication to the public -- copyright in hyperlinks -- number of areas require clarification -current situation involving hyperlinks and communication to the public summarized.
Subject: Copyright infringement--case law--Europe
Subject: Electronic copyright--case law--Europe
Subject: Copyright infringement--Europe
SNIPER No.: 2014/01528
Author: Tsoutsanis, Alexander, 1976Title: Finding Vredo (pat.pending): the Dutch Supreme Court decision on escitalopram
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 8, August 2014, pp. 644-649.
Summary: Pharma patent litigation as a result of Lundbeck's drug escitalopram -- Lundbeck's
success as a pharmaceutical company -- attempts by generic pharmaceutical companies to
invalidate Lundbeck's patent for escitalopram -- decision of the Dutch Supreme Court -- substance
protection -- burden of proof -- problem-solution approach -- Supplementary Protection Certificate
(SPC) -- analysis of Supreme Court decision -- analysis of the Court of Appeal decision -comparison with the Vredo v Veenhuis decision -- comparison with other European proceedings -even if a competitor found a different method to obtain the same substance this would still infringe
the product claim -- practical significance.
Subject: Patent litigation--pharmaceutical industry
Subject: Inventive step--case law--Netherlands
Subject: Pharmaceuticals--case law--Netherlands
SNIPER No.: 2014/00885
Author: Kappos, David
Title: Getting the right balance: proposed US legislation aimed at abusive patent litigation
Source: Intellectual Asset Management. No. 65, May-June 2014, p. 43.
Summary: Legislation designed to reduce abusive patent suits is before the United States Senate
-- 'covered customer stay' provision -- would permit end users and retailers to opt out of patent
lawsuits -- leaving their high-tech product suppliers to defend against infringement claims
implicating their products -- proposed legislation provides a safe haven to retailers that
unknowingly acquire and offer infringing goods or services -- also any entity capable of positioning
itself midstream in its supply chain -- proposed legislation ignores the fact that supply-chain
positioning is a commercial trait that can be manipulated with ease -- would create a major
loophole in a primary mechanism safeguarding the interests of good-faith patent rights holders -provide an opportunity for strategic manipulation by bad actors -- for patentees this makes it far
more costly to seek justice from those who steal their innovations -- simple way to achieve the
objectives of the proposed legislation's stay provision -- any bill that passes into law should direct
the covered customer stay provision to small businesses and retailers that use and sell unaltered
goods -- avoids opening the potentially devastating loophole of supply-chain manipulation --
SNIPER Bulletin – November 2013
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achieves the core purpose of putting the most appropriate party front and centre in infringement
suits.
Subject: Patents--law and legislation--United States
Subject: Patents--reform--United States
SNIPER No.: 2013/02844
Author: Licks, Otto B.
Author: Aboim, Carlos
Title: Government tech transfers hijack IP rights in Brazil
Source: World Intellectual Property Review. September-October 2013, p. 162.
Summary: Government of Brazil attacking intellectual protection afforded by the TRIPs Agreement
to the research-based pharmaceutical industry -- nationalisation of the production of drugs
protected by patents and data package exclusivity -- waiving of tender and choosing an exclusive
supplier for the government leads to illegalities
Subject: Intellectual property rights--Brazil
Subject: Pharmaceutical industry
SNIPER No.: 2013/02840
Author: Pavlidou, Ermioni
Title: Halloumi v Hellim: more than just a trademark battle?
Source: World Intellectual Property Review. September-October 2013, pp. 146-147.
Summary: German manufacturer Garmo AG v Organismos Kypriankis Galaktokomikis
Viomichanias, a Cypriot company -- Garmo filed application for a community trade mark using the
word 'Hellim', which meant "Halloumi" in Turkish -- specialty cheese from Cyprus -- opposition by
the firm from Cyprus citing likelihood of confusion with its own registered 'Halloumi' mark -opposition dismissed -- decision appealed -- rejected by Board of Appeal of OHIM -- mark of weak
character and confusion was unlikely -- order at the General Court filed by the applicant to annul
the Board's decision -- Court of Justice of the European Union
Subject: Geographical indicators--Europe
Subject: Trade mark opposition--case law--Europe
Subject: Confusing similarity--Europe
SNIPER No.: 2014/00359
Author: Marcus, Stephen
Title: In re Yasuhito Tanaka: an improper expansion of reissue law and practice
Source: Journal of the Patent and Trademark Office Society. Vol. 95 No. 4, 2013, pp. 421-443.
Summary: United States patent law -- reissue proceedings may be used to add additional
dependent claims even if none of the issued claims are changed -- in re Tanaka, a divided panel of
the US Court of Appeals for the Federal Circuit confirmed that a reissue proceeding may be used
SNIPER Bulletin – November 2013
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to add dependent claims as a hedge against possible invalidity of the original claims -- Tanaka is
likely to reinforce the use of reissue proceedings by patentees who would like to strengthen their
patent protection without sacrificing claim scope and damages for previously issued claims -statutory requirements for reissue involved in Tanaka -- original Tanaka patent -- prosecution
before the USPTO examiner.
Subject: Patent claims--United States
SNIPER No.: 2013/02836
Author: Le Cointe, Clémence
Title: In the house: a partial solution
Source: World Intellectual Property Review. September-October 2013, pp. 132-134.
Summary: Question of whether the Trademark Clearinghouse is a helpful tool for brand owners -useful for owners to register domain names during the Sunrise Period -- on the other hand, the
Trademark Claims service raises the question -- whether recording of a mark at the Clearinghouse
guarantee conflicting identical or similar domain name cannot be fraudulently registered -registration at the TMCH -- not registering at the TMCH
Subject: Trade mark registration
Subject: Domain name registration
Subject: Brand management
Subject: Trade mark owners' rights
SNIPER No.: 2014/01849
Author: Suthersanen, Uma
Title: Incremental inventions in Europe: a legal and economic appraisal of second tier patents
Source: Journal of Business Law. July 2001, pp. 319-343.
Summary: Proposed utility model regime in Europe -- important features of the proposed law -rationale in introducing second tier patent law -- solve or avoid problems of the current patent
system -- problem with the second tier patent regime -- encourages widening of protectable subject
matter -- whether consistent with traditional role of patent protection -- normative economic
rationales of intellectual property protection -- why IP rights introduced -- nature of inventive effort
evolved from technological breakthroughs to focus on incremental advance -- whether there is a
case for a two-tier approach in European patent law -- role of patent system to act as incentive to
future inventive activities -- most inventions now incremental in nature
Subject: Minor patents--economics--Europe
Subject: Minor patents--law and legislation--Europe
SNIPER No.: 2014/01867
Author: Anand, Pravin
Author: Sreekumar, Achuthan
Title: Indian courts use even-hand to resolve commercial disparagement in film
SNIPER Bulletin – November 2013
Page 10 of 33
Source: Asia IP: Protecting your Intellectual Assets. Vol. 6 No. 6, July 2014, pp. 49-51.
Summary: State of case law in India that addresses aspects of trade mark law, such as
commercial disparagement, infringement, passing off, dilution, tarnishment -- trade mark rights
holders taking filmmakers to court seeking injunctive relief and damages-- affirmative defence of
"freedom of speech and expression" in the context of films and other audiovisual works – case law
on commercial disparagement -- cases filed against the movie Chakravyuh -- Hamdard National
Foundation & Anr v. Hussain Dalal & Ors -- G4S Security Services (India) & Anr v. Sohail Maklai
Entertainment & Ors -- ICICI Bank v. Ashok Thakeria & Ors
Subject: Trade marks--case law--India
Subject: Trade mark dilution--culture and entertainment industry--India
Subject: Free speech--India
SNIPER No.: 2014/00360
Author: White, Dennis M.
Title: Inefficiencies in overcompensating design patent damages under 35 U.S.C. s289 in
complex technologies
Source: Journal of the Patent and Trademark Office Society. Vol. 95 No. 4, 2013, pp. 444-458.
Summary: Patent remedies -- weighing gains and costs to promote the progress of science and
useful arts -- property rule versus liability rule -- total profits without apportionment: more of a
property rules than liability -- jury award to Apple Inc -- do design patentees win with the total
profits -- suggests removal of 35 USC s289 damages -- define the article of manufacture narrowly
to compensate the patentee rather than punish the infringer.
Subject: Industrial designs--United States
Subject: Industrial design infringement--United States
SNIPER No.: 2013/03003
Author: Schmit, Cason
Title: Intellectual property's upcoming quantum leap: projecting the future challenges facing
quantum information technology through a historical perspective of the computer revolution
Source: Journal of the Patent and Trademark Office Society. Vol. 95 No. 3, 2013, pp. 271-284.
Summary: Obstacles to intellectual property protection facing quantum information technology -how a quantum computer works -- the quantum copyright conundrum -- the quantum patenting
problem -- logistics in licensing -- how the emerging technology of quantum computing may be
unprotectable under current copyright and patent law -- complex quantum mechanics driving the
technology -- understanding the principles of quantum mechanics could provide additional
difficulties for lawyers and judges in trying to apply the law to quantum information technologies.
Subject: Intellectual property licensing--computer-related inventions
Subject: Data mining--science and research industry--United Kingdom
SNIPER Bulletin – November 2013
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SNIPER No.: 2014/00890
Author: Mousavi, Nader A.
Author: Dietderich, Andrew G.
Title: IP deals meet bankruptcy: what every IP professional needs to know
Source: Intellectual Asset Management. No. 65, May-June 2014, pp. 69-77.
Summary: Bankruptcy treatment of intellectual property (IP) -- risks of a bankrupt counterparty -models for IP transactions in bankruptcy -- special considerations for patent sales in bankruptcy -clean and certain title -- rights of a debtor to terminate effectively outbound licences granted to third
parties under debtor IP -- rejection of a non-debtor counterparty's licence under debtor IP -- risks
and opportunities for IP owners that have granted licences to bankrupt debtors -- debtor rejection
of licences -- extraordinary risks and opportunities.
Subject: Value of intellectual property
Subject: Bankruptcy
SNIPER No.: 2014/01527
Author: Kunstadt, Robert M.
Title: IP jury trials: trouble ahead?
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 8, August 2014, pp. 639-643.
Summary: Creation of a Patent Trial and Appeal Board (PTAB) and implications for IP trial
practice -- right to a IP jury-trial and the US Constitution -- 'public right' exception to jury trial -- IP
rights as 'public rights' -- implications of the 'public right' analysis for IP jury trials -- possible
extension to trade mark and copyright cases -- jeopardy of diminution.
Subject: Patent validity--United States
Subject: Patent litigation--United States
Subject: Intellectual property litigation--United States
SNIPER No.: 2014/01865
Author: Fu, George Q.
Author: Wu, Cathy
Author: Zhang, Yuxia
Author: He, Tao
Title: IPR enforcement innovations in the Shanghai Pilot Free Trade Zone
Source: Asia IP: Protecting your Intellectual Assets. Vol. 6 No. 6, July 2014, pp. 39-45.
Summary: Shanghai's Pilot Free Trade Zone (FTZ) -- launched September 2013 -- liberalization
in financial services, shipping services, commercial and trade services, professional services,
cultural services -- preferential policies -- more flexibility to meet requirements of high efficiency,
convenience and speed -- need for an innovative IPR mechanism to be put into trial
implementation in the FTZ -- establishment of intellectual property rights enforcement mechanisms
in the FTZ -- legal analysis of the administrative law enforcement authority of the FTZ Management
Committee -- analysis of the Management Committee's administrative law enforcement model -explore a new mechanism for synchronizing and coordinating IPR enforcement in the FTZ --
SNIPER Bulletin – November 2013
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explore a three-in-one mechanism that combines trade mark, patent and copyright enforcement -build a collaborative IPR enforcement agency -- regulate collaborative law enforcement through
regulations as much as possible -- establish a shared IPR law enforcement information mechanism
-- establish a summary procedure for IPR administrative cases -- Shanghai expected to become an
Asia-Pacific IPR centre by the year 2020
Subject: Intellectual property enforcement--China
Subject: Free trade--China
SNIPER No.: 2014/00893
Title: IP-related statistics from the recent past
Source: Intellectual Asset Management. No. 65, May-June 2014, pp. 90-91.
Summary: World's most valuable brands -- size of national research and development
communities compared to number of domestic patent applications -- stock performance of selected
publicly traded IP-centric companies, Jan-Mar 2014 -- top 30 patent assignees by number of
transactions, Jan-Feb 2014 -- top 30 patent assignors by number of transactions, Jan-Feb 2014 -European patent filings by country of origin 2013.
Subject: Intellectual property--statistics
SNIPER No.: 2014/01872
Author: Takahashi, Michiru
Author: Hashimoto, Rika
Title: Japan's amended Trademark Act: new marks including colour, motion, sound, can be
protected
Source: World Intellectual Property Report. Vol. 28 No. 10, October 2014, pp. 28-30.
Summary: Japan will allow registration of non-traditional trade marks -- new definition of trade
mark -- colour, sound, motion, hologram and position marks will now be protected -- scent/smell,
touch and taste marks will not be protected as trade marks -- filing for new types of trade marks -statement of type of mark -- representation of trade marks 9trade mark sample) -- detailed
description and object -- absolute requirements -- distinctiveness -- conflict with neighbouring rights
-- transitional measures -- right of continuing use -- no special provisions of filing date -- still waiting
for publication of the Cabinet Order, Ordinance of the Ministry, Economy, Trade and Industry
(METI) and examination guidelines
Subject: Trade marks--law and legislation--Japan
Subject: Non-traditional marks--Japan
SNIPER No.: 2014/01854
Author: Tessensohn, John A.
Title: Japan's upcoming design law changes
Source: World Intellectual Property Report. Vol. 28 No. 9, September 2014, pp. 34-36.
Summary: Legislative changes to Japan's Designs Act that will come into force when Japan
accedes to the Geneva Act of the Hague Agreement Concerning the International Registration of
SNIPER Bulletin – November 2013
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Industrial Designs -- the Hague System -- key changes to the legislation -- filing date -- principle of
one design one application -- no secret design system -- refund of individual designation fees -possibility of inconsistency or lack of drawings -- provisional rights in relation to international
publication -- expiration date -- plans to adopt the Locarno Classification
Subject: Industrial designs--law and legislation--Japan
Subject: International industrial design applications--Japan
SNIPER No.: 2014/00884
Author: Arvidsson, Anders
Author: Lindell, Christian
Author: Ydreskog, Margareta
Title: Key patent valuation issues for European businesses raising new capital
Source: Intellectual Asset Management. No. 65, May-June 2014, pp. 35-40.
Summary: Value of a patent as it appears on a company's balance sheet is based on the cost of
obtaining it -- investors are more interested in how much earnings the patent can generate -- no
precision with regard to either assessment or valuation when it comes to patents -- reasons for
patent valuation -- ways to raise capital -- providers of patent valuations -- how should European
patents be valued? -- lessons from North American patent investors -- patent valuation standards -technical factors -- legal factors -- case study -- future trends.
Subject: Value of intellectual property
Subject: Financial management
SNIPER No.: 2014/01738
Author: Kupzok, Agnieszka
Title: Law and economics of unitary patent protection in the European Union: the rebel's viewpoint
Source: European Intellectual Property Review. Vol. 36 No. 7, 2014, pp. 418-427.
Summary: New patent regime established in the European Union -- historical overview -Community Patent Convention -- harmonising patent law in Europe -- adoption of unitary patent
regulation -- legal developments leading up to the adoption -- implications -- enhanced cooperation procedure -- introduction of the "unitary patent package" -- economic consequences -regulation on the language arrangements.
Subject: Patent systems--reform--Europe
Subject: Patents--law and legislation--Europe
Subject: Patent systems--harmonisation--Europe
SNIPER No.: 2013/02832
Author: Giacopello, Fabio
Author: Jun, Bian
Title: Light at the end of the tunnel: trademark reform in China
SNIPER Bulletin – November 2013
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Source: World Intellectual Property Review. September-October 2013, pp. 120-121.
Summary: Second reading of the Trade mark law draft by the National People's Congress in June
2013 -- well-known trade marks -- bad faith registrations -- mandatory timeframes -- statutory
damages -- punitive damages -- administrative fines -- non-retroactiveness -- assignment -oppositions -- non-traditional trade marks -- electronic filing -- multiclass application -- trade mark
renewal
Subject: Trade marks--law and legislation--China
SNIPER No.: 2014/01526
Author: Stone, David
Author: Corbett, William
Title: Magmatic v PMS: no RCD infringement on appeal
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 8, August 2014, pp. 635-638
Summary: The Court of Appeal has overturned the High Court's decision that a registered
Community design (RCD) was infringed -- Magmatic Ltd v PMS International Ltd -- Trunki child's
ride-on suitcase not infringed by the Kiddee Case after all -- trade mark Trunki -- Kiddee Case by
PMS inspired by the registered product -- legal history -- The High Court ruled that PMS infringed
Magmatic's RCD, and UK unregistered design rights -- analysis of Court of Appeal decision -errors identified by Court of Appeal -- permission to appeal to the Supreme Court refused but
Magmatic has sought permission from the Supreme Court -- designers, originators or practitioners
will not be pleased by the decision.
Subject: Community Design--case law--United Kingdom
Subject: Industrial design infringement--case law--United Kingdom
Subject: Industrial designs--case law--United Kingdom
SNIPER No.: 2013/02843
Author: Beck, Michaël
Title: Major revision of the Patent Act coming up
Source: World Intellectual Property Review. September-October 2013, p. 161.
Summary: Revision to bring the patent laws of Belgium into compliance with the Patent Law
Treaty -- lower threshold for according a filing date to a patent application -- Act will now have a
TRIPs-compliant definition of the domain in which Belgian patents may be granted
Subject: Patents--law and legislation--Belgium
SNIPER No.: 2014/01873
Author: Teoh, Joshua
Title: Malaysian appeal court affirms copyright eligibility of compilation works
Source: World Intellectual Property Report. Vol. 28 No. 10, October 2014, pp. 30-32.
Summary: Malaysian Court of Appeal decision in New Straits Times Press (M) Bhd & Anor v.
Admal Sdn Bhd -- claim on the copyright over a concept paper called 'NST Spell it Right" which
SNIPER Bulletin – November 2013
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was said to transpose into written form the concept and rules of an English spelling competition -appeal from a decision of the Malaysian High Court where Admal succeeded in its claim that New
Straits Times Press had infringed its copyright in the concept paper by running an English spelling
competition known as "RHB-NST Spell It Right" -- facts of the case -- the High Court decision -- the
appellants' arguments -- the Court of Appeal decision -- entitlement to copyright protection -copyright infringement -- compilation could be original and copyrightable even if the information
compiled is not original.
Subject: Copyright infringement--case law--Malaysia
SNIPER No.: 2014/01875
Author: Ramulu, Hemalatha
Title: Malaysian Appeal Court overturn High Court on validity of bottle design
Source: World Intellectual Property Report. Vol. 28 No. 10, October 2014, pp. 34-37.
Summary: Malaysian Court of Appeal decision overturning the High Court in a case concerning
the validity of the design of a plastic bottle used in the sale of a juice drink -- four civil appeals
heard together -- F&N Dairies (Malaysia) Sdn Bhd v. Tropicana Products, Inc -- F&N Beverages
Manufacturing Sdn Bhd v. Tropicana Products, Inc -- F&N Beverages Manufacturing Sdn Bhd v.
Tropicana Products, Inc -- Fraser and Neave Limited v. Tropicana Products, Inc -- facts of the
cases -- Tropicana's allegations that the bottle design used to sell First Choice juice infringed
Tropicana's design rights -- the defendants' position -- denied allegations and counterclaimed for
invalidity -- High Court proceedings -- invalidation proceedings -- novelty -- significance of the
decisions.
Subject: Industrial design infringement--case law--Malaysia
Subject: Industrial design validity--case law--Malaysia
SNIPER No.: 2014/01877
Author: Lim, Kwanghui
Author: O'Sullivan, Don
Author: Falk, Michael R.
Added author: IP Australia
Title: The market for design: insights from interviews with Australian firms [electronic resource]
Source: IP Australia Economic Research Paper, No. 03, 2014.
General Note: Report commissioned by IP Australia. Written with guidance from Benjamin MitraKahn (Chief Economist, IP Australia).
Summary: Insights into how the market for design operates -- formal protection of intellectual
property through design rights plays a minor role in the decision making of firms operating in the
market for design -- creates difficulties for buyers and sellers in transacting with each other and
capturing value -- both buyers and sellers have adapted to imperfections in the market for design
by developing reputational signals -- signals of a seller's reputation assume a heightened
importance -- strong evidence that sellers engage in strategies to manage these signals -- signals
of a buyer's reputation also assume great importance -- strong evidence of buyers engaging in
strategies to manage these signals -- signals play a role in enabling buyers and sellers to influence
each other's level of investment and effort in the transaction.
Subject: Industrial design owners' rights--Australia
SNIPER Bulletin – November 2013
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Subject: Industrial designs--statistics--Australia
SNIPER No.: 2013/02846
Author: Cooper, Rodrigo
Title: Modifications to Chile's trademark law
Source: World Intellectual Property Review. September-October 2013, p. 164.
Summary: The law was passed in 1991 and has undergone three relevant modifications since
then with the intent of adapting it to international agreements -- a bill was sent to Congress aiming
to completely replace the Industrial Property Law -- new definition of a trade mark -- regulations
introduced for certification marks -- modifications made relating to the requirement of use of
registered marks -- enhanced protection of well-known marks -- law recognises dilution for the first
time
Subject: Trade marks--law and legislation--Chile
SNIPER No.: 2014/01741
Author: Wood, Leanne
Title: A name of thrones: why domain names should now be a separate intellectual property right
Source: European Intellectual Property Review. Vol. 36 No. 7, 2014, pp. 452-464.
Summary: Practice of applying trade mark legislation to the domain name system -- analysing the
differences between the trade mark and domain name systems -- similarities -- distinctions
between trade marks and domain names -- different types of domain name disputes and their
prevalence -- other forms of unwritten law, regulations and policies that make up the governance of
domain names -- common law of passing off used in domain name disputes -- Uniform Domain
name Dispute Resolution Policy -- national dispute resolution procedures -- author proposes
reform in the form of an international harmonising domain name treaty -- domain name as a
separate intellectual property right.
Subject: Domain name registration
Subject: Domain name dispute resolution
Subject: Domain names--reform
SNIPER No.: 2014/00889
Author: Geurts, Benoit
Title: Navigating the pitfalls of patent transactions
Source: Intellectual Asset Management. No. 65, May-June 2014, p. 67.
Summary: Potential pitfalls when completing transactions in the patent market -- lack of
authorisation to release assets -- inability to disclose accurate encumbrances -- lack of accounting
mechanism.
Subject: Value of intellectual property
Subject: Mergers and takeovers
SNIPER Bulletin – November 2013
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SNIPER No.: 2013/02838
Author: Rechardt, Lauri
Title: New starts: changes in Finland
Source: World Intellectual Property Review. September-October 2013, pp. 140-143.
Summary: IP court to be established -- government proposal in 2009 to concentrate all civil
intellectual property disputes in the Market Court -- bill was passed to extend the scope of authority
in 2012 -- rationale for the new IP court -- whether the IP court be able to meet its stated objectives
-- operation of the new court to start in September 2013 -- reforming or deforming copyright -Internet activists have started an initiative to reform Finnish copyright law -- enforcement of
copyright online -- downloading from unauthorised sources -- exceptions and limitations -- using
copyrighted material in a classroom should be considered private use
Subject: Intellectual property--Finland
Subject: Intellectual property law--Finland
Subject: Copyright
SNIPER No.: 2014/01742
Author: Sherliker, Tristan
Title: No liens over electronic data: Court of Appeal keeps equity out of the digital world: Your
Response Ltd v Datateam Business Media Ltd
Source: European Intellectual Property Review. Vol. 36 No. 7, 2014, pp. 465-470.
Summary: Your Response Ltd v Datateam Business Media Ltd -- treatment of intangible property
rights -- to consider validity of the lien over electronic data -- law and the artificer's lien -- Court of
Appeal decision creates practical consequences for IP dispute resolution -- contractual remedies
governing the supply of intellectual property -- exercise of liens in the legal profession -modernisation required to bring the law up to date -- parliamentary intervention.
Subject: Intellectual capital
Subject: Database rights
Subject: Value of intellectual property
SNIPER No.: 2014/01862
Author: Shuai, Amanda
Title: Off the beaten path: China
Source: Asia IP: Protecting your Intellectual Assets. Vol. 6 No. 6, July 2014, pp. 11-20.
Summary: Intellectual property practices outside China's first tier cities of Beijing, Shanghai,
Guangzhou and Shenzhen -- second tier cities -- level of economic development unbalanced
leading to different levels of IP awareness -- differences in how enforcement handled -- varying
levels of government support for IP -- quantity versus quality issues for patent applications -- need
for Chinese enterprises to have IP strategy planning and development -- IP infringement -- some
rights holders reluctant to litigate -- fear lengthy process and low damage awards -- increase in
maximum statutory compensation -- litigation helps raise awareness of an industry and encourages
more patent applications -- Chinese enterprises need to pay more attention to the value of IP -university research and development -- internet infringement -- competition among IP agents and
SNIPER Bulletin – November 2013
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lawyers --need for foreign agents to have an intermediary -- local firms in second-tier cities need to
ensure they are continually learning, improving and developing business
Subject: Intellectual property industry--China
Subject: Intellectual property awareness--China
SNIPER No.: 2014/01863
Author: Glass, Gregory
Title: Off the beaten path: India
Source: Asia IP: Protecting your Intellectual Assets. Vol. 6 No. 6, July 2014, pp. 21-30.
Summary: Intellectual property law firms outside India's major cities of Delhi and Mumbai -discussions with firms in secondary cities such as Chennai and Ahmedabad -- issues -- India had
27 different languages and wide variety of cultures -- difficulties in IP enforcement -- lawyer needs
to know the culture, language and the people to do effective enforcement work -- in Mumbai and
Delhi, awareness of IP and willingness to protect it much higher -- IP promotion in South India -whether clients understand the need to protect IP -- people understand about trade marks, but
difficult to educate them about patents -- smaller local firms take the time to educate their clients -growth of Indian cities results in improved understanding of IP - -South India as an economic
power zone -- Chennai, Bangalore, Hyderabad, Coimbatore -- IP-specific advantages of Chennai -judges who are well-trained and experienced in IP matters -- lower costs for lawyers outside
Mumbai and Delhi -- national firms increasingly turning their attention to India's secondary cities
Subject: Intellectual property industry--India
Subject: Intellectual property awareness--India
SNIPER No.: 2013/02839
Author: Nuñez, Joaquin
Title: Old law, new problems: IP online in Venezuela
Source: World Intellectual Property Review. September-October 2013, pp. 144-145
Summary: Lack of regulations and institutions in many Latin American countries to safeguard and
protect Internet content -- misconception of applying telecommunication laws as part of the
regulatory framework -- Venezuela currently handling infringements of intellectual property based
on the 1955 Industrial Property Law -- social responsibility -- knowing your local partners and
service providers -- Internet fair use -- trade secrets protection -- recommendations for
entrepreneurs looking to enter the Venezuelan Internet market
Subject: Intellectual property law--Venezuela
Subject: Intellectual property infringement
Subject: Internet
SNIPER No.: 2013/02841
Author: Evans, Haydn
Title: Open season on patent trolls?: the bad, the ugly, but also the good
SNIPER Bulletin – November 2013
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Source: World Intellectual Property Review. September-October 2013, pp. 148-150.
Summary: Initiative by President Obama to curb activities of patent trolls -- blurring of lines as we
move towards greater open innovation -- argument from many non-practicing entities is that they
are looking to encourage new approaches to open innovation and to form partnerships -- explosion
in number of NPE's since 2011 -- monetisation of patent portfolios through licensing -- a force for
good
Subject: Non-practicing entities
Subject: Innovation (Technological)
Subject: Patent licensing
SNIPER No.: 2014/01846
Author: Man, Bradley
Added author: IP Australia
Title: Overview of the intellectual property government open data [electronic resource]
Source: IP Australia Economic Research Paper, No. 02, 2014.
General Note: Report commissioned by IP Australia. Written with guidance from Benjamin MitraKahn (Chief Economist, IP Australia), Adam Bialowas (Economist, IP Australia), Melanie O'Byrne
(Senior Analyst, IP Australia) and Matthew Johnson (Economist, IP Australia).
Summary: Organisation of the intellectual property government open data -- firm-level data MIIPA
tables -- how the firm-level data or MIIPA tables was created -- using the IP government open data
-- what technologies are being patented by different industries -- what goods are trade marks being
sought for by the different industries -- firms who invent but do not manufacture in Australia -technology boundaries around industries and growth sectors
Subject: Data mining--research--Australia
Subject: Patent systems--Australia
SNIPER No.: 2014/01740
Author: Ventose, Eddy D. (Eddy David), 1976Title: Patent protection for genetic diagnostic testing for Down's syndrome
Source: European Intellectual Property Review. Vol. 36 No. 7, 2014, pp. 439-451.
Summary: Patenting methods of medical treatment -- issue of patent protection for diagnostic
testing for Downs syndrome -- European approach -- Enlarged Board of Appeal (EBA) -- decisions
of the Technical Boards of Appeal (TBA) applying the learning of the EBA in CYGNUS/Diagnostic
method -- screening method to determine if a pregnant woman was carrying a foetus with Down's
syndrome does not offend art.53(c) EPC -- approach in the United States -- decision of the United
States Supreme Court in Mayo Collaborative Services v Prometheus Labs -- Federal Circuit
decision -- PerkinElmer v Intema -- Prometheus case used to invalidate the patent for a method of
diagnosis for Down's syndrome.
Subject: Patenting of life forms
Subject: Gene patents
Subject: Medical procedures and devices--patentability
SNIPER Bulletin – November 2013
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SNIPER No.: 2014/01847
Author: Allred, Brent B.
Author: Park, Walter G.
Title: Patent rights and innovative activity: evidence from national and firm-level data
Source: Journal of International Business Studies. Vol. 38 No. 6, November 2007, pp. 878-900.
Summary: Effects of patent strength on different aspects of innovative activity -- firm-level
research and development (R&D), domestic patenting and foreign patenting -- analysis shows
complexity of evaluating effects of patent reform on innovative activity -- effects vary depending on
initial level of patent strength and country's level of economic development -- for developing
economies: patent strength negatively affects domestic patent filings and insignificantly affects
R&D and domestic patent filings -- for developed countries: patent strength positively affects R&D
and domestic patent filings but negatively affects foreign patent filings
Subject: Patents
Subject: Innovation (Technological)
Subject: Research and development
SNIPER No.: 2014/00886
Author: Raidma, Taavi
Author: Torres, Jorge M.
Title: Patents, network effects and social media
Source: Intellectual Asset Management. No. 65, May-June 2014, pp. 44-48.
Summary: Market capitalisation -- patents and patent portfolios contribute to intangible asset value
-- Twitter's management appear to have given patents a minimal role in its overall business
strategy -- pricing with high-growth expectations -- patent risk and acquisition do not measurably
contribute to value -- investors reward social media companies that can add users quickly -- what
shareholders want.
Subject: User-generated content
Subject: Value of intellectual property
SNIPER No.: 2014/01851
Author: Ficks, Erik
Author: Ljungholm, Oskar
Title: Permissible use of a third party trademark: no damage, no infringement
Source: World Intellectual Property Report. Vol. 28 No. 9, September 2014, pp. 27-29.
Summary: Swedish Supreme Court decision -- construction competitors Mon.Zon Sverige AB and
Layher Aktiebolag -- provides guidance on permissible use of a third party trade mark -- decision
sets the threshold for "use in the course of trade" of a trade mark at a very low level -- interprets
EU case law as meaning that trade mark protection in cases of double identity is focused on the
protection of norms -- there is no infringement when no damage to any of the functions of a trade
mark can be shown by the proprietor -- important for proprietors to observe this burden of proof in
trade mark infringement cases -- facts of the case -- analysis of the decision.
Subject: Trade mark infringement--case law--Sweden
Subject: Trade mark use--Sweden
SNIPER Bulletin – November 2013
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SNIPER No.: 2014/00894
Author: Bull, Chris
Title: Pharmaceutical patents in South Africa: a new drug war
Source: Intellectual Asset Management. No. 65, May-June 2014, p. 92.
Summary: South African government published its draft national intellectual property (IP) policy for
comment -- covers a range of issues -- debating the way in which pharmaceutical patents should
be dealt with -- market for pharmaceuticals growing in emerging economies -- population becoming
wealthier and suffering from chronic diseases -- governments are concerned about the pricing of
drugs -- tactics governments are employing to deal with this issue -- draft IP policy giving guidance
on the way in which the South African government intends amending legislation relating to
pharmaceutical patents -- changes proposed under the IP policy, which would impact on
pharmaceutical companies -- widespread criticism of the draft IP policy.
Subject: Patents--pharmaceutical industry--South Africa
Subject: Patents--policy--South Africa
SNIPER No.: 2014/01739
Author: Kwong, Jennifer
Title: Photographs of public art in the digital environment
Source: European Intellectual Property Review. Vol. 36 No. 7, 2014, pp. 428-437.
Summary: New uses of photography introduced to consumers by new technologies -- copyright
position of photographs of public art under the artistic work exceptions in Australia's Copyright Act
1968 (Cth) -- exceptions are of limited relevance to public art photographs in the digital
environment -- replace with a fair use exception -- Myer report -- copyright reform to accommodate
public art photography -- representation of artistic work exception.
Subject: Artistic works--Australia
Subject: Fair use (Copyright)
Subject: Copyright--law and legislation--Australia
SNIPER No.: 2014/00892
Author: Evans, Haydn
Title: Powers of attraction
Source: Intellectual Asset Management. No. 65, May-June 2014, pp. 85-89.
Summary: Companies recognising the need for more strategic approach to developing their
intellectual property (IP) portfolios -- in many deals IP due diligence is not diligent enough -companies left without a clear idea of the status and value of the intellectual property they are
acquiring -- long term risks involved -- vendors may not appreciate the true value of their assets -or any limitations on the use of those assets or potential obligations to other rights holders -incremental innovation -- successful start-ups will also attract the attention of investors and
potential acquirers -- numerical count and legal check of the target's IP is not enough -- patent
landscape searches and competitive IP research are required.
Subject: Due diligence
Subject: Mergers and takeovers
SNIPER Bulletin – November 2013
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SNIPER No.: 2013/02845
Author: Carrington, Victoria E.
Title: Professional designations: clarity at last
Source: World Intellectual Property Review. September-October 2013, p. 163.
Summary: Confirmation by the Federal Court that professional designations may function as
certification marks provided they meet the criteria in the Trade Marks Act -- Ontario Dental
Assistants Association v Canadian Dental Association -- 'CDA' certification mark -- interlocutory
injunctions remain elusive creatures, depending on where you are -- Wildman v Kulyk -- plaintiff
unable to meet requirements for her passing off claim
Subject: Certification trade marks--Canada
Subject: Injunctions--Canada
SNIPER No.: 2014/01530
Author: Sautier, Bertrand
Title: Proposed amendments to US patent law: will this affect the reality of patent litigation
practice?
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 8, August 2014, pp. 656-661.
Summary: Proposed amendments to US patent law and their consequences with particular
reference to non-practicing entities (NPEs) and patent assertion entities (PAEs) -- article refers to
PAEs as a broader category of NPEs -- definition of PAEs -- patent trolling debates -- bills
introduced in the United States Congress to deal with the situation -- The America Invents Act -The GAO report -- The anti-joinder provision -- The SHIELD Act -- The Innovation Act -- main
problem with the reform proposals is the lack of factual data about the extent of the harm to the
innovation system -- changes may be beneficial.
Subject: Non-practicing entities--law and legislation--United States
Subject: Patents--law and legislation--United States
Subject: Patent litigation--United States
SNIPER No.: 2014/01859
Author: Liddicoat, John
Title: Re-evaluating innocent infringement in Australia: patent numbers and virtual marking
Source: Australian Intellectual Property Journal. Vol. 25 No. 1, October 2014, pp. 18-34.
Summary: Marking of products sold in Australia to indicated they are patented -- gives notice to
third parties that the products are protected by patents -- in the absence of such notices, infringers
may not be aware of patent rights -- patentees who are successful in providing infringement may
not be eligible for monetary remedies -- those found liable for infringement can argue that their
infringing actions were done innocently -- market economy that generally relies on free competition
for efficient allocation of resources -- patent marking signals that at least one functional aspect of a
product is not open to direct competition -- current Australian provisions on effecting notice of
patent rights via patent marking are contrary to patent theory and result in notice being too easily
discharged -- obviates protection that should be afforded to innocent infringers -- causes
inefficiencies in the patent regime -- amendments to the innocent infringement provision are
recommended -- recommendations based on the mechanism by which UK law demands patent
SNIPER Bulletin – November 2013
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numbers be included to effect notice through patent marking -- mechanism by which "virtual
marking" is explicitly permitted in the US -- amendments will harmonise Australia's patent law with
major trading partners -- increase the overall efficiency of the patent system.
Subject: Patent infringement--liability--Australia
Subject: Patents--law and legislation--Australia
SNIPER No.: 2014/01855
Author: Syrianos, Stella
Title: Registration of trade-mark based on foreign use and registration validity obtained in Canada
Source: World Intellectual Property Report. Vol. 28 No. 9, September 2014, pp. 36-38.
Summary: Decision of the Federal Court of Canada -- Coors Brewing Company and Molson
Canada 2005 v. Anheuser-Busch, L.L.C. -- dealt with an invalidity dispute regarding an issued
registration -- Court dismissed the expungement action against the trade mark, "Grab Some Buds"
-- ruled the registration cannot be expunged based on non-compliance with procedural filing
requirements -- facts of the case -- foreign use and registration filing basis -- invalidity of trade
mark registrations -- Molson Coor's reliance on the Thymes decision -- Anheuser's response -analysis of the decision
Subject: Trade mark validity--case law--Canada
Subject: Trade mark registration--Canada
SNIPER No.: 2014/01529
Author: Kihwelo, Paul Faustin
Title: Remedies for trade mark infringement in Tanzania: principles and practice
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 8, August 2014, pp. 650-655.
Summary: Assessment of damages in trade mark infringement cases before the courts in
Tanzania -- trade mark law in Tanzania and the situation in Zanzibar -- remedies for trade mark
infringement -- injunctions -- account of profit -- withdrawing goods from the market -- monetary
relief for damage -- cases relating to damages in infringement of trade marks -- principles
developed mostly by case law since 1995 -- criteria used in assessing damages in civil law and
trade mark law turn out to be similar.
Subject: Infringement remedies--Tanzania
Subject: Trade mark infringement--case law--Tanzania
Subject: Trade marks--law and legislation--Tanzania
SNIPER No.: 2014/01858
Author: McEniery, Benjamin J.
Title: Repeatability or reproducibility in Australian patent law
Source: Australian Intellectual Property Journal. Vol. 25 No. 1, October 2014, pp. 5-17.
Summary: Extent to which a claimed process must be repeatable or reproducible in order to be
patentable according to Australian patent law -- whether a process must yield identical or near
SNIPER Bulletin – November 2013
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identical results each time the process is invoked -- if not what degree of repeatability is required -question is relevant when considering the patentability of some methods of medical treatment and
diagnosis, biotechnology inventions and business methods.
Subject: Patentability--law and legislation--Australia
Subject: Patent claims--Australia
SNIPER No.: 2014/00881
Title: A revolution postponed
Source: Intellectual Asset Management. No. 65, May-June 2014, pp. 4-5.
Summary: Quanlin Paper, a company based in Chinese province of Shandong secured a loan
against a portfolio of patent and trade mark rights -- among the largest known sums that an
intellectual property (IP) portfolio has directly generated in a transaction -- State Intellectual
Property Office (SIPO) revealed that Chinese companies obtained over 4 billion dollars of credit
guaranteed on patent rights in 2013 -- people have been wrestling with patent-backed lending for a
number of years -- struggled to come up with solutions that would allow patent assets to be used
as collateral in any meaningful sense -- financing challenges -- Chinese government is very
focused on raising IP awareness.
Subject: Value of intellectual property--China
Subject: Intellectual capital--China
SNIPER No.: 2013/03004
Author: Skladany, Martin
Title: The revolutionary influence of low enlightenment: weakening copyright in developing
countries to improve respect for human rights and the rule of law
Source: Journal of the Patent and Trademark Office Society. Vol. 95 No. 3, 2013, pp. 285-327.
Summary: Developed countries foreign policies and "Big Copyright" -- effect on human rights and
the rule of law in developing countries -- why developing countries need to substantially weaken
copyright -- best for developed countries -- best for developing countries -- increasing access to
developed country art in developing countries -- highlights of possible concerns -- reciprocal noncopyright agreements -- cooperating with big copyright -- copyright free clearing houses -developed country individuals -- importing art and harm to indigenous culture.
Subject: Copyright--reform--developing countries
SNIPER No.: 2014/00887
Author: Burt, Scott
Title: The role of trust in patent monetisation
Source: Intellectual Asset Management. No. 65, May-June 2014, pp. 51-57.
Summary: Conversant Intellectual Property Management Inc (formerly MOSAID Technologies Inc)
issued a set of guidelines for responsible patent licensing -- included specific pledges addressing
four hot-button issues: fairness, litigation abuse, patent quality and transparency -- driver for these
principles -- background to MOSAID Technologies -- capitalising on a growing trend -- professional
SNIPER Bulletin – November 2013
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patent management firms, both as acquirers of patent assets -- as partners with product
companies in deriving greater value from their patent holdings -- role of trust in business success -criteria for partnering with non-practising entities (NPEs) -- taking the principles public.
Subject: Intellectual property management
Subject: Non-practicing entities
SNIPER No.: 2014/00355
Author: Holder, Sean J.
Title: The s 112, paragraph 6 pitfalls for computer software systems claims under the February
2011 examination guidelines
Source: Journal of the Patent and Trademark Office Society. Vol. 95 No. 4, 2013, pp. 348-374.
Summary: Supplementary guidelines for patent examiners regarding interpretation of claims under
35 U.S.C. s 112 -- supplemental information for examining computer software claims that employ
functional language -- history of case law and the interpretation of means plus function claims -case law establishes the roles of burdens in s112, paragraph 6 -- February 2011 United States
Patent and Trademark Office (USPTO) guidelines -- suggests prescriptive examination guidelines
ignore the presumptions as well as expose mischaracterisations of case law -- potential patent
prosecution issues.
Subject: United States. Patent and Trademark Office--procedure
Subject: Patent claims--United States
Subject: Patent applications--law and legislation--United States
SNIPER No.: 2013/02833
Author: Aljehani, Khalil
Title: The Saudi case: working with the GCC's new unified trademark law
Source: World Intellectual Property Review. September-October 2013, pp. 122-125.
Summary: Kingdom of Saudi Arabia has acceded to the World Trade Organization and joined
other Gulf Cooperation Council states that make up the Customs Union -- obliged to implement
agreements such as TRIPS -- Regulations for Border Protection of IP Rights (RBPIPR) issues by
Saudi Arabia -- trade mark owners have the right to seek issuance of a judicial order by the Board
of Grievances before lodging a civil or criminal case under Article 6 of the RBPIPR -- law provides
more protection to trade marks at borders
Subject: Trade marks--law and legislation--Saudi Arabia
Subject: Customs--Saudi Arabia
SNIPER No.: 2013/02842
Title: Scotch guard: how to protect whisky
Source: World Intellectual Property Review. September-October 2013, pp. 157-159.
Summary: Interview with Legal Advisor at the Scotch Whisky Association, Alan Park -- what the
SWA is responsible for in terms of IP -- prime focus in terms of protecting intellectual property
SNIPER Bulletin – November 2013
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rights -- where Scotch whisky is protected by a geographical indicator -- what the benefits are of a
GI indicator -- drawbacks of not being protected -- how the Scotch brand has been misused -system for monitoring trade mark applications -- how the SWA is made aware of suspected
infringements -- some of the more problematic jurisdictions -- why the problem has increased -how Scotch whisky competes with other brands -- challenges the organisation faces
Subject: Brand management
Subject: Geographical indicators
Subject: Alcohol marks
SNIPER No.: 2014/01708
Title: Snapshot: Fleep
Source: Trademarks and Brands Online. Vol. 3 No. 2, 2014, p. 58.
Summary: New app released from digital start-up Fleep -- instant messaging and 'reply-all' style of
email -- how Fleep works -- main differences between Fleep and its competitors -- promoting the
brand -- branding and business challenges for Fleep in the future -- fraudsters mimicking app
services -- preventing copyright infringement in the future -- how Fleep can help brand owners and
businesses.
Subject: Ruukel, Henn--interviews
Subject: Multimedia works
SNIPER No.: 2014/00891
Author: Ward, Henry B.
Author: O'Brien, Kevin
Author: Taulbee, George
Author: Wilson, J. Mark
Title: Software licences and patent infringement claims: a risky business?
Source: Intellectual Asset Management. No. 65, May-June 2014, pp. 79-83.
Summary: Significant hidden risks in software licence agreements for those who fail to take
account of a relatively common indemnification exclusion -- negotiation of proper allocation of risk
between the parties -- licensees need to pay particular attention to such indemnification provisions
or else risk exposing themselves to unexpected liability and expense -- common circumstance
which results in substantial risk is in the context of computer software used in a publicly visible
manner -- many companies utilise third-party software to provide users with desired functionality -often relatively inexpensive and available for immediate download and use -- many licensees do
not give serious consideration to the terms -- roundtable discussion.
Subject: Intellectual property licensing
Subject: Patent infringement
Subject: Computer-related inventions
SNIPER Bulletin – November 2013
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SNIPER No.: 2014/00358
Author: Lee, Seong-hee Emily
Title: Software patent eligibility: a call for recognizing and claiming concrete computer programs
Source: Journal of the Patent and Trademark Office Society. Vol. 95 No. 4, 2013, pp. 402-420.
Summary: Software patent eligibility -- diverse district court opinions and incompatible Federal
Circuit opinion -- suggests that software is not abstract but a concrete subject matter that does not
fall under the abstract idea judicial exception -- software patent jurisprudence -- comparison with
other disciplines -- claim drafting practice -- challenges specific to software arts -- harmonising the
Supreme Court cases with the association inquiry.
Subject: Computer-related inventions--United States
Subject: Business methods--United States
Subject: Patentability--United States
SNIPER No.: 2014/01868
Author: Mirandah, Gladys
Author: Fajelagutan, Jennifer D.
Title: The sweet taste of "MANGO" is not for everyone
Source: Asia IP: Protecting your Intellectual Assets. Vol. 6 No. 6, July 2014, p. 52.
Summary: Philippines -- application by Ariston Commercial Inc to trade mark "mango" for watches
-- registration opposed by Consolidated Artists BV which had registered "mango" for bags, fashion
and accessories -- Office of the Director General (ODG) of the Intellectual Property Office of the
Philippines (IPOPHL) upheld the opposition -- facts of the case -- Consolidated Artists had used
the mark for jewellery -- had proven its ownership and prior use of the mark -- concept of
"confusion of business"
Subject: Trade mark registration--Philippines
Subject: Confusing similarity--case law--Philippines
SNIPER No.: 2014/00356
Author: Rangarajan, Arjun
Title: Towards a more uniform procedure for patent invalidation
Source: Journal of the Patent and Trademark Office Society. Vol. 95 No. 4, 2013, pp. 375-389.
Summary: Patent invalidation after grant -- points at which a patent can be invalidated in the
United States -- estoppel implications before and after the passage of the America Invents Act -invalidation with prior art before the America Invents Act (AIA) -- invalidation options after AIA -proposals for single-forum patent invalidation with prior art -- prior use rights and fewer
opportunities to change claim language after patent grant.
Subject: United States. Leahy-Smith America Invents Act
Subject: Patent validity--United States
SNIPER Bulletin – November 2013
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SNIPER No.: 2014/01860
Author: Longden, James Alexander
Title: Trade mark use and misleading advertising in Google AdWords: a comparative analysis of
search engine liability in Australia and Europe
Source: Australian Intellectual Property Journal. Vol. 25 No. 1, October 2014, pp. 35-48.
Summary: Advertisers have used Google's AdWords service to select competitors trade marks as
keywords -- when an internet user enters a corresponding search term, it triggers the display of
advertisements that offer the advertisers own competing goods or services -- trade mark owners
have pursued both advertisers and Google for misleading and deceptive conduct in Australia -trade mark infringement in Europe -- recent landmark decisions in both continents -- striking
similarity between the analyses conducted by Australia's and Europe's highest courts of the role
played by Google in advertisers' infringing conduct.
Subject: Keyword advertising
Subject: Marketing
SNIPER No.: 2013/02834
Author: Giménez, Rafael
Title: Trademark hijacking in Mexico
Source: World Intellectual Property Review. September-October 2013, pp. 126-128.
Summary: Phenomenon emerging of foreign trade mark bullying -- unscrupulous people
registering famous brands as trade marks in Mexico -- the law can do little about it -- legal
proceedings different from commercial procedures -- case of iFone SA de CV v Apple Inc -- trade
mark designs with adverse effects -- request to register a mark for 'Dia de los Muertos' by Disney -considered plagiarism of the festival honouring the dead by many Mexican people -- application
was cancelled -- obstacles -- framework of economic competition between merchandisers -- use of
a trade mark -- single person has registered more than 60 identical or similar marks in Mexico,
obtaining rights to Abercrombie & Fitch's 'Ruehl No. 925', 'G-Star Raw', 'Jack Jones', 'Company 8'
and 'Paper, Demin & Cloth'
Subject: Famous trade marks--Mexico
Subject: Trade mark registration--Mexico
SNIPER No.: 2013/03005
Author: Constantine, Derek E.
Title: The ugly stepchild of patent prosecution gets uglier: information disclosure statements and
their use of copyright licenses
Source: Journal of the Patent and Trademark Office Society. Vol. 95 No. 3, 2013, pp. 328-347.
Summary: Information disclosure statement (IDS) filings with the United States Patent and
Trademark Office (USPTO) -- examines the IDS filing requirements -- reasons for the increase in
disclosed references -- two copyright lawsuits and the fair use defence -- possible solution to the
issue of copyright licensing in IDS filings -- 'substantively involved -- 'material to patentability' -inequitable conduct -- use of copyright sources by attorneys of patent literature.
Subject: Patent litigation
Subject: Intellectual property licensing
SNIPER Bulletin – November 2013
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SNIPER No.: 2014/00357
Author: Tutt, Andrew
Title: Unique copyrights
Source: Journal of the Patent and Trademark Office Society. Vol. 95 No. 4, 2013, pp. 390-401.
Summary: Sonny Bono Copyright Term Extension Act -- private bills, the constitution and
copyright -- politics and economics of unique copyrights -- copyright more than an instrument to
drive incentives -- intellectual properties are not created equal -- high profile Supreme Court cases
Eldred v Ashcroft and Golan v Holder indicate there is no Constitutional limit on the duration of the
term or the number and duration of retroactive extensions.
Subject: Copyright owners' rights--law and legislation--United States
Subject: Intellectual property law--reform--United States
SNIPER No.: 2014/01852
Author: Baur, Amelia Feulner
Title: US Supreme Court provides new hurdles for personalized medicine in Limelight Networks v.
Akamai Technologies
Source: World Intellectual Property Report. Vol. 28 No. 9, September 2014, pp. 29-31.
Summary: US Supreme Court decision -- unanimous finding that induced infringement of a patent
under 35 USC s 271 (b) cannot exist where no single actor has directly infringed the patent under
USC s 271(b) or any other statutory provision -- facts of the case -- litigation history -- significance
of the decision -- implications for method claims in personalized medicine and diagnostics -- future
considerations -- creates significant hurdles to patenting and enforcing personalized medicine type
claims
Subject: Patent infringement--case law--United States
Subject: Medical procedures and devices--patentability--United States
SNIPER Bulletin – November 2013
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© Commonwealth of Australia 2013
Published by: IP Australia
Discovery House, 47 Bowes Street, Phillip, ACT 2606
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www.ipaustralia.gov.au