SNIPER Bulletin
Searchable Networked Intellectual
Property Electronic Resource
March 2015
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ISSN: 2202-753X
SNIPER No.: 2015/00164
Author: Leichtman, David
Title: Aereo's fatal blow
Source: Intellectual Property Magazine. December 2014-January 2015, pp. 21-22.
Abstract: Retransmission of television programs for a subscription -- safe harbour defence -violation of the public performance right of the US Copyright Act -- copyright evading technologies - principle of volition -- innovative, but non-productive technologies are not excluded from copyright
infringement litigation -- streaming allowed to laptops, etc. only with permission and/or fair
payment.
Subject: Neighbouring rights--case law--United States
Subject: Copyright infringement--United States
SNIPER No.: 2015/00031
Author: Banerjee, Arpan
Title: Alligators, crocodiles and cutlasses: trade mark infringement in Guyana
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 12, December 2014, pp. 9991001.
Abstract: Infringement of trade marks and intellectual property in developing countries -- examines
case of a trade mark infringement of a UK based tool manufacturer Martindale -- visual branding of
tools -- mimicking labels of better known products common in Guyana -- importance of fieldwork
and investigation in protecting trade marks and intellectual property.
Subject: Trade mark infringement--Guyana
Subject: Counterfeiting
SNIPER No.: 2014/00900
Author: Shao, Wei
Author: Chi, Shaojie
Title: Analysis of fight for "red can"
Source: China Patents and Trademarks. Vol. 115 No. 4, October 2013 pp. 85-87.
Abstract: Social effects of adjudication in legal cases -- unfair competition and the good-faith
doctrine -- dispute between Guangzhou Pharmaceutical Group and Jiaduobao Drink & Food Co
over the manufacture of Wanglaoji tea -- advertising to differentiate between brands -- accusation
of unfair competition -- definition of famous goods -- separation of trade mark and package/trade
dress -- trade mark licensing -- acquiring the goodwill of a licensed trade mark -- consumer
confusion.
Subject: Trade dress--China
Subject: Trade mark infringement--manufacturing and processing industry--China
Subject: Trade mark licensing--China
SNIPER Bulletin – March 2015
Page 1 of 60
SNIPER No.: 2014/01676
Author: Yang, Kai, 1963Title: Analysis of "functional feature" in designs
Source: China Patents and Trademarks. Vol. 117 No. 2, April 2014, pp. 53-56, 48.
Abstract: Examination of definitions under TRIPS, Chinese, and US patent law -- determination of
functional and ornamental features -- sole defining doctrine.
Subject: Patent examination--analysis--China
Subject: Industrial design registrability--China
SNIPER No.: 2014/02106
Author: Nie, Ningle
Author: Huang, Dehai
Title: Analysis of patent protection of GUI innovative points
Source: China Patents and Trademarks. Vol. 118 No. 3, July 2014, pp. 94-100.
Abstract: Amendments to Guidelines for Patent Examination -- Graphic User Interfaces (GUIs) -patent protection for product designs including GUI -- use of software on networks -- cloud
computing -- scope of GUI patents -- protection of partial designs.
Subject: Computer-related inventions--patentability--China
Subject: Patent examination--law and legislation--China
SNIPER No.: 2014/01759
Title: Annual review of EU trademark law (part 1): introduction
Source: Trademark Reporter. Vol. 104 No. 2, March-April 2014, pp. 445-453.
General Note: First article in a series of twelve. See also 2014/01760; 2014/01761; 2014/01762;
2014/01763; 2014/01764; 2014/01765; 2014/01766; 2014/01767; 2014/01768; 2014/01769;
2014/01770.
Abstract: European Union trade mark law -- year 2013 in review -- description of the European
Union -- European Union law -- treaties and legislation -- trade mark law in Europe -- TM Directive - Community trademark ? CTM Regulation -- Enforcement Directive -- decisions and appeals in the
EU system -- interpretation of EU law -- future of trade mark law in Europe
Subject: Trade marks--law and legislation--Europe
Subject: Trade marks--case law--Europe
SNIPER No.: 2015/00033
Author: Blum, Jeremy
Author: Cullen, Amy
Title: The Apple store and unconventional trade marks: how easy are they to enforce?
SNIPER Bulletin – March 2015
Page 2 of 60
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 12, December 2014, pp.
1008-1011.
Abstract: Registration of a retail store front and layout as a trade mark -- Apple Inc v Deutches
Patent und Markenamt (DPMA) C-421/13, EU:C:2014:2070 -- enforcement of unconventional
marks -- difficulty of assessing scope of protection -- use of unconventional marks with other
branding.
Subject: Non-traditional marks--registrability
Subject: Trade mark enforcement
Subject: Trade dress
SNIPER No.: 2014/01650
Author: Song, Jianbao
Title: The application of exclusionary principle of patentable subject matter: a perspective from
American case of Mayo
Source: China Intellectual Property: comprehensive IP report on China. Vol. 59 No. 1-2, JanuaryFebruary 2014, pp. 68-71.
Abstract: Laws of nature, natural phenomena and abstract ideas come under the Exclusionary
Principle in the US -- US Supreme Court interpretation of patentable subject matter -- Mayo v
Prometheus -- production and use of a diagnostic test -- effect of Bilski case ruling on the Mayo
case -- granting of certiorari -- correlation between naturally produced metabolites and therapeutic
efficacy and toxicity is unpatentable.
Subject: Patent claims--United States
Subject: Patentability--case law--United States
Subject: Patent examination--procedure--United States
SNIPER No.: 2015/00013
Author: Albutt, Jodie
Title: Are the UK courts clamping down on 'evergreening' strategies for the extension of patent
protection?
Source: Pharmaceutical Patent Analyst. Vol. 4 No. 1, 2015, pp. 1-3.
Abstract: Revoking of Genentech patents in the UK utilising evergreening strategies -- extending
patent protection -- demonstration of inventive step -- interpretations of supplementary protection
certificates in the European Union -- patentability of modification to known drugs.
Subject: Patent revocation--case law--United Kingdom
Subject: Patent extension--United Kingdom
Subject: Evergreening--pharmaceutical industry--United Kingdom
SNIPER No.: 2015/00022
Author: Palazzi, Pablo A.
Author: Rizzo Jurado, Marco
Title: Argentine court validates first claim of ambush marketing
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 12, December 2014, pp. 965966.
SNIPER Bulletin – March 2015
Page 3 of 60
Abstract: Use of survey evidence to prove consumer confusion in trade mark litigation -Asociación del Futbol Argentino (AFA), Procter & Gamble Argentina SRL (P&G) and Santa Mónica
de Argentina SA v Unilever de Argentina SA (Unilever), Federal Court of Appeals on Civil and
Commercial matters, Division 3 (Buenos Aires, Argentina), 10 June 2014 -- reversal, on appeal of
decision to deny injunction filed against Unilever -- unfair competition -- confusion about
sponsorship during 2014 World Cup.
Subject: Ambush marketing--Argentina
Subject: Major sporting events--Argentina
SNIPER No.: 2015/00016
Author: England, Paul
Title: Assessing damages for unjustified threats of patent infringement
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 12, December 2014, pp. 952954.
General Note: Finding of SDL Hair Ltd v Next Row Ltd and Others [2014] EWHC 2084, Intellectual
Property Enterprise Court, England and Wales, 3 July 2014
Abstract: Sale of induction heating technology in UK -- loss of chance principles -- loss decided by
court assessment not balance of probability -- unjustified threats.
Subject: Damages--United Kingdom
Subject: Intellectual property abuse
Subject: Patent infringement
SNIPER No.: 2015/00024
Author: Gommers, Carina
Title: The autonomous concept of parody and conflicting fundamental rights: a balancing act
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 12, December 2014, pp. 968970.
Abstract: C-201/13, Deckmyn v Heirs Vandersteen, Opinion of the Advocate General, Court of
Justice of the European Union (CJEU), 22 May 2014 -- question of copyright infringement when
parody defence is raised -- harmonisation of laws -- three elements for consideration, the purpose,
effect and the content of the parody -- freedom of expression -- parody as an autonomous and
unitary concept.
Subject: Harmonisation of laws--Europe
Subject: Copyright infringement--case law--Europe
Subject: Artistic works
SNIPER No.: 2013/02721
Author: Popper, Andrew F.
Title: Beneficiaries of misconduct: a direct approach to IT theft
Source: Intellectual Property Law Review. Vol. 45, 2013, pp. 765-798.
General Note: Originally published in: Marquette Intellectual Property Law Review Vol. 17 No. 1,
Winter 2012, pp. 27-61.
SNIPER Bulletin – March 2015
Page 4 of 60
Abstract: Stolen information technology (IT) as a domestic and global problem -- impact of stolen
IT on competition -- addressing IT theft under existing legal regimes -- Federal Trade Commission
Act -- state Unfair Competition Laws -- national trade laws -- the Washington and Louisiana
Statutes -- precedent for the Washington Statute -- legal and economic objections to the Statute -preemption - fairness in price competition
Subject: Crime--information technology industry--United States
Subject: Competition (Economics)--information technology industry--United States
SNIPER No.: 2013/02719
Author: Love, Brian J.
Author: Seaman, Christopher B.
Title: Best mode trade secrets
Source: Intellectual Property Law Review. Vol. 45, 2013, pp. 723-745.
General Note: Originally published in: Yale Journal of Law & Technology, Vol. 15 No. 1, 2012, pp.
1-23.
Abstract: Trade secrecy and patent rights traditionally have been considered mutually exclusive -trade secret rights are premised on secrecy -- patent rights require public disclosure -- without a
sufficiently detailed description of the invention, patents are invalid -- passage of the Leahy-Smith
America Invents Act (“AIA”) means this once black-and-white distinction may become more grey -now, an inventor’s failure to disclose in her patent the preferred method for carrying out the
invention, the so-called “best mode”, will no longer invalidate the patent rights -- reasons why it
may become routine post-patent reform for patentees to attempt to assert both patent rights and
trade secret rights for preferred embodiments of their invention in certain types of cases -consideration of potentially undesirable ramifications of this change and suggest one approach
courts may use to limit claims of concurrent trade secret and patent protection when equity
demands.
Subject: Trade secrets--United States
Subject: Patents--United States
SNIPER No.: 2014/02162
Author: Sumida, Masayoshi
Title: Can the make-up and hair style of fashion models, fashion design, cat walking and fashion
shows be protected by copyright and neighboring rights?: "Forever21 fashion shows case"
decision of July 19, 2013 by Tokyo District Court
Source: AIPPI: Journal of the Japanese Group of AIPPI. Vol. 39 No. 5, September 2014, pp. 314341.
Abstract: Case determined whether the copyright, neighbouring rights and moral rights were
infringed by a third party broadcasting a video clip shot by another company -- Court dismissed
claims made by plaintiffs -- the judgment provided grounds for further discussion on whether
fashion designs and fashion shows could be copyrighted -- original graphic work can be
copyrighted -- copyright on fashion models' make up, dress design, outfits for fashion models
including accessories varies worldwide.
Subject: Fashion and design industry--case law--Japan
Subject: Luxury goods
SNIPER Bulletin – March 2015
Page 5 of 60
SNIPER No.: 2014/01779
Author: Khoury, Amir H.
Title: The case against the protection of negative trade secrets: Sisyphus' entrepreneurship
Source: IDEA: the Intellectual Property Law Review. Vol. 54 No. 3, 2014, pp. 431- 477.
Abstract: Argument in favour of laws protecting trade secrets should allow for the reporting of
negative information in previous research -- long term goal to prevent replication of failures in
research -- trade secret protection -- trade secrets in business development -- trade secrets
internationally recognised as a form of intellectual property -- overlap between trade secrets and
copyright despite fundamental differences between the two -- if business continues to use trade
secrets for protection in the hope of evading disclosure, there will be less knowledge disclosed in
the public domain -- protection of trade secrets usually falls under common law provisions -intellectual property law guards exclusivity rather than promote inclusivity -- using a collective
approach to research -- whistleblowing -- voluntary disclosure of information to the market -unprotected subject matter -- creation of a trading market for negative information.
Subject: Inevitable disclosure (Trade secrets)
Subject: Competition (Economics)
Subject: Intellectual property management
SNIPER No.: 2014/02093
Author: Pilka, Joanna
Title: The case for specialised arbitration
Source: World Trademark Review. No. 51, October-November 2014, pp. 106-107.
Abstract: Arbitration proceedings as a way of resolving domain name disputes -- Research and
Academic Computer Network (NASK) -- domain name registry for the top level country-code '.pl' -Domain Name Regulations -- disputes can be settled by arbitration or court proceedings before
any common court -- two arbitration courts in Poland -- choosing to arbitrate -- process of
mediation -- arbitration proceedings -- getting domain names back -- arbitrators are specialists in
the intellectual property field -- arbitration proceedings are much faster than proceedings before
ordinary courts -- recommended to resolve disputes through the specialised arbitration courts.
Subject: Domain name dispute resolution--Poland
Subject: Domain name registration--Poland
SNIPER No.: 2014/02186
Author: Peng, Bo
Author: Cavero Tomas, Marta
Title: A cheat sheet to navigate the complex maze of exclusivities in the United States
Source: Pharmaceutical Patent Analyst. Vol. 3 No. 4, 2014, pp. 339-343.
Abstract: Pharmaceutical exclusivities provide protection from competitors by deferring market
entry for a limited time either through the regulatory process or the patent system -- protection for
R&D -- innovator companies can use exclusivity to delay market entry of a competitor's product -patent protection for drugs -- extension of exclusivity beyond patent term by regulatory exclusivities
-- approval of generic products through an Abbreviated New Drug Application (ANDA) -- HatchWaxman Act -- biologics are regulated under the Public Health Service Act -- considerable
complexity of patent and drug regulations systems.
SNIPER Bulletin – March 2015
Page 6 of 60
Subject: Data exclusivity
Subject: Patent extension--pharmaceutical industry
Subject: Research and development--pharmaceutical industry
SNIPER No.: 2014/00908
Author: Zhou, Yunchuan
Title: Co-existence agreement and trademark registration
Source: China Patents and Trademarks. Vol. 116 No. 1, January 2014 pp. 67-74.
Abstract: Registrability of the trade mark in suit -- co-existence agreements can cause confusion
for consumers -- possibility of false co-existence agreements -- comparison between China and
WIPO on attitude to letters of consent.
Subject: Trade mark distinctiveness--China
Subject: Trade mark registrability
SNIPER No.: 2015/00087
Author: Knaak, Roland
Author: Kur, Annette
Author: Hilty, Reto M, 1958Added author: Max-Planck-Institut für Innovation und Wettbewerb
Title: Comments of the Max Planck Institute for Innovation and Competition of 3 June 2014 on the
proposal of the European Commission for a Directive on the Protection of Undisclosed Know-How
and Business Information (Trade Secrets) against their Unlawful Acquisition, Use and Disclosure of
28 November 2013, COM(2013) 813 Final [electronic resource]
Source: Max Planck Institute for Innovation and Competition Research Paper. No. 14-11, 3 June
2014.
Abstract: Max Planck Institute comments on an EU proposal for trade secret protection -- scope of
the proposed Directive -- definition of trade secret -- definition of "infringing good" -- scope of
protection -- unlawful acquisition -- unlawful use and disclosure -- import and export of products -reverse engineering -- of justification -- enforcement considerations -- of litigation -- limitation
period -- preservation of confidentiality -- interim measures -- continuation of conduct and securities
-- assessment of proportionality -- measures resulting from a decision on the merits of a case -alternative financial compensation -- claims for information and preserving of evidence.
Subject: Trade secrets--law and legislation--Europe
SNIPER No.: 2014/01778
Author: Kalkwarf, Wayne A.
Title: The Commerce Clause versus the Patent and Copyright Clause: a battle of constitutional
proportions
Source: IDEA: the Intellectual Property Law Review. Vol. 54 No. 3, 2014, pp. 351-429.
SNIPER Bulletin – March 2015
Page 7 of 60
Abstract: Expansion of Commerce Clause in the US threatens to render the Patent and Copyright
Clause meaningless -- number of Supreme Court decisions regarding the Commerce Clause -alteration to Commerce Clause jurisprudence -- creation of precedent regarding the scope and
breadth of the Commerce Clause -- interaction between constitutional clauses -- growth and
development of the Patent and Copyright Clause -- first known patent granted in 1421 in Florence - brief history of patents issued in Venice in the 15th century -- copyrights existed in Venice from
around 1500 -- subsequent systems in Europe and USA based on the basic Venetian patent rules - development of patent and copyright laws in the USA -- Feist Publications, Inc. v. Rural
Telephone Service Company Inc. -- importance of a trade mark as an asset -- protection of
trademarks under federal law -- first judicial definition of trade mark dilution in case of Allied
Maintenance Corp.. v Allied Mechanical Trades, Inc. -- legal protection of trade dress -constitutional conflict between commerce and patent and copyright -- TrafFix Devices, Inc. v.
Marketing Displays, Inc., -- relationship between state unfair competition laws and federal patent
laws -- an owner cannot have both a design patent and a trade mark for the same design.
Subject: Commerce
Subject: Trade mark dilution
Subject: Conflict of laws
SNIPER No.: 2014/00905
Author: Meng, Pu
Title: A comparative study of stability of invention patent and utility model patent
Source: China Patents and Trademarks. Vol. 116 No. 1, January 2014 pp. 38-46.
Abstract: Research on utility model patents -- preliminary study of the Beijing Higher People's
Court findings in 391 cases of invalidation of invention and utility model patents -- Distribution of
claimants and defenders -- rate of successful invalidation -- causes of action -- overview of current
research -- causes of action in inventiveness cases.
Subject: Minor patents--China
Subject: Patent validity
SNIPER No.: 2014/01673
Author: Zhang, Yan
Author: Liu, Xiaoyu
Author: Liu, Hehui
Title: Comparison between practices related to functional features in China and the United States:
with comments on Nokia v. Huaqin
Source: China Patents and Trademarks. Vol. 117 No. 2, April 2014, pp. 26-32.
Abstract: Nokia v. Shanghai Huaqin Communication Technology Co., Ltd. -- Supreme People's
Court interpretation of law relating to patent infringement disputes not consistent with practices of
State Intellectual Property Office -- step defined features of computer programs -- US has wider
interpretation of functional features -- discussion of Guidelines for Patent Examination in China -differences in patent prosecution -- apparatus claims not always enforceable -- prior art in software
innovation.
Subject: Computer-related inventions--China
Subject: Patent litigation--China
Subject: Patent examination--United States
SNIPER Bulletin – March 2015
Page 8 of 60
SNIPER No.: 2014/02102
Author: Lu, Shijie
Author: Mao, Xiwen
Author: Song, Steve
Title: Comprehensive adjudication of infringement under doctrine of equivalents in view of Gree v.
Midea
Source: China Patents and Trademarks. Vol. 118 No. 3, July 2014, pp. 42-50.
Abstract: Zhuhai Gree Electric Appliances Co., Ltd v. Guangdong Midea Refrigeration Equipment
Co., Ltd -- patent infringement and counter claim for invalidity -- initial finding of infringement
overturned by Guangdong Higher People's Court -- ambiguity in claims -- interpretation of
extended protection under the doctrine of equivalents -- importance of accurate descriptions and
drawings -- technical features are not necessarily functional features -- estoppel -- use of prior art
defence.
Subject: Doctrine of equivalents--case law--China
Subject: Patent validity--China
SNIPER No.: 2014/02101
Author: Rui, Songyan
Title: A comprehensive analysis of adjudication of trade mark administrative cases by Beijing No.
1 Intermediate People's Court
Source: China Patents and Trademarks. Vol. 118 No. 3, July 2014, pp. 26-35.
General Note: See also 2010/00637 and 2013/02666 for related articles
Abstract: Determining similarity of trade marks -- public perception of pronunciation, shape and
meaning -- application of 'meaning' especially important in China -- characteristics of goods or
services -- two categories of justification when determining trade mark similarity -- registering in
bad faith and free riding -- trade mark similarity where goods were not in the same class group -regional issues when determining similar goods or services -- consideration of common business
practice and marketing strategies -- application of Article 13, para 2 of the trade mark law -- issue
of whether a recited mark also constitutes a well-known mark.
Subject: Trade mark infringement--China
Subject: Trade mark examination--China
SNIPER No.: 2014/02109
Author: Rui, Songyan
Title: A comprehensive analysis of adjudication of trademark administrative cases by Beijing No. 1
Intermediate People's Court
Source: China Patents and Trademarks. Vol. 119 No. 4, October 2014, pp. 27-37
Abstract: Inconsistent application of unhealthy influence provision of trade mark law -- registering
famous names as trade marks -- registration in good faith -- registering a large number of trade
marks without intent to use -- determination of prior and/or existing rights -- merchandising rights -infringing prior name rights -- design similarity -- registering an expired trade mark -- trade mark
use in OEMs.
Subject: Trade mark use--China
Subject: Trade mark infringement--China
SNIPER Bulletin – March 2015
Page 9 of 60
SNIPER No.: 2014/00909
Author: Tao, Jun
Title: Conditions for application of "registration of trademarks acquired by fraud" in trademark right
grant and affirmation cases: comments on NGK v. TRAB and NTK Technologies (HK) Ltd., an
administrative case of trademark dispute
Source: China Patents and Trademarks. Vol. 116 No. 1, January 2014 pp. 79-83.
Abstract: Registration of a trade mark divided into relative prohibitive and absolute grounds -judicial interpretation divided regarding application of provision of registration of trade marks
acquired by fraud -- NTK Technologies (HK) Ltd fraudulently changed its English trade name to
NTK -- examples of other cases against the Trademark Review and Adjudication Board -- proof of
intention to act fraudulently.
Subject: Trade mark registrability
Subject: Trade mark litigation
SNIPER No.: 2012/03060
Added author: IP Australia
Title: Consultation paper: removal of the obligation to lodge search results under sub-section
45(3) and section 101D of the Patents Act 1990 [electronic resource]
Source: Consultation Paper: Removal of the Obligation to Lodge Search Results Under Subsection 45(3) and Section 101D of the Patents Act 1990. 2007.
Abstract: IP Australia consulted on amendments to the Patents Regulations 1991 -- changes
would affect regulations made under subsection 45(3) and 101D of the Patents Act 1990 -consultation paper was released on 16 May 2007 and submissions were due by 13 June 2007 -- a
position paper with an overview of responses to the paper was released on 18 October 2007 -Patents Amendment Regulations 2007 (No. 1) with effect from 22 October 2007 substantially
removed the requirement to inform IP Australia of the results of documentary searches by or on
behalf of foreign patent offices -- amendment regulations also allowed notices of matters affecting
the validity of a standard patent to be filed up to three months from the date of advertisement of
acceptance of an application.
Subject: Patents--law and legislation--Australia
Subject: Patent processing--Australia
SNIPER No.: 2014/01773
Author: Ericksen, Eugene P.
Author: Pittaoulis, Melissa A.
Title: Control groups in Lanham Act surveys
Source: Trademark Reporter. Vol. 104 No. 3, May-June 2014, pp. 744-764.
Abstract: Lanham Act -- use of causative language -- use of control groups in Lanham Act surveys
did not appear until the early 1990s -- observational versus experimental designs in causation
surveys -- use of controlled experiments to test new theories -- cognitive dissonance theory -correct use of random assignment -- use of software in telephone and internet surveys -- face-toface interviewing -- importance of control groups -- plausible alternative hypotheses -- example of
survey designed to test infringement of a trade mark -- Tri-star v Unger -- creation of fictitious
controls -- controls for a trade dress case -- case studies of litigation involving surveys and control
groups -- confusion surveys.
SNIPER Bulletin – March 2015
Page 10 of 60
Subject: Trade mark litigation--analysis--United States
Subject: Evidence--United States
Subject: Market research--analysis--United States
SNIPER No.: 2015/00159
Author: Dennis, Jim
Title: Converse kicks off war with 'toe cap' competitors
Source: Intellectual Property Magazine. December 2014-January 2015, pp. 13-14
Abstract: Converse infringement suit against 31 other manufacturers of baseball shoes (also
known as "Chuck T's" or "bumpers") -- potential to ban imports of infringing products to US through
the US International Trade Commission -- use of cease-and-desist letters -- trade mark protection
for design of mid-sole and toe cap of the shoe -- suit based on Lanham Act -- onus of proof on
Converse to prove consumer confusion -- adaptation of design by third parties allowed after a
certain time -- design rights masquerading as trade mark rights.
Subject: Trade mark infringement--United States
Subject: Fashion and design industry--United States
Subject: Brand confusion--United States
SNIPER No.: 2015/00032
Author: Cameron, Alec
Title: Copyright exceptions for the digital age: new rights of private copying, parody and quotation
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 12, December 2014, pp.
1002-1007.
Abstract: Impact of UK copyright exceptions of October 2014 regarding private copying, parody
and quotation -- assessment of practical impact -- personal copying of a copyrighted work allowed
for private use only -- UK creative industries allowed to take advantage of the growth in opportunity
for parody -- parody exception drafted as a 'fair dealing' exception -- no definition of the key
concepts in the Parody Exception -- photographs and film clips can be quoted under new
legislation.
Subject: Culture and entertainment industry--United Kingdom
Subject: Fair use (Copyright)
Subject: Literary works
SNIPER No.: 2015/00263
Author: Barkachi, Patrick
Title: Copyright in the Internet age
Source: Policy. Vol. 30 No. 3, Spring 2014, pp. 21-26.
Abstract: Copyright laws in Australia need to be updated -- more regulation is not the answer -purpose of copyright law -- extended authorisation liability -- website blocking injunctions -- need
for an open Internet for a growing Australia -- need to find a balance -- ac cess and affordability -whether artists who make their work available through streaming services should accept a
significant pay cut -- solution to complicated copyright issues will only be found through adaptive
reform and practice over time
SNIPER Bulletin – March 2015
Page 11 of 60
Subject: Copyright--reform--Australia
Subject: Electronic copyright--Australia
SNIPER No.: 2015/00162
Author: Matheson, Sarah
Author: Stewart, David
Title: Cracking the (source) code of preliminary discovery
Source: Intellectual Property Magazine. December 2014-January 2015, pp. 17-18 .
Abstract: ObjectiVision Pty Ltd v Visionsearch Pty Ltd and Anor -- ophthalmic diagnostic devices - development of software -- benefits obtained by seeking preliminary discovery before
commencing proceedings -- similarities between functions of the software -- preliminary discovery
applications particularly relevant in cases where information is not publicly available to the
applicant's case.
Subject: Information technology industry--Australia
Subject: Research and development--Australia
SNIPER No.: 2015/00112
Author: Maracke, Catharina
Title: Creative Commons International: the international license porting project: origins,
experiences, and challenges [electronic resource]
Source: Journal of Intellectual Property, Information Technology and Electronic Commerce. Vol. 1
No. 1, March 2010, pp. 4-18.
Abstract: Creative Commons licensing -- transition from United States copyright law to a series of
international licences -- Creative Commons licensing infrastructure -- the global porting project -legal aspects -- language, marketing and promotional aspects -- perspectives on international
porting.
Subject: Creative Commons (Organization)
Subject: Copyright licensing
SNIPER No.: 2013/02716
Author: Tehranian, John
Title: Curbing copyblight
Source: Intellectual Property Law Review. Vol. 45, 2013, pp. 603-643.
General Note: Originally published in: Vanderbilt Journal of Entertainment & Technology Law, Vol.
14 No. 4, Summer 2012, pp. 993-1033
Abstract: Identifying and analysing the growing problem of ?copyblight, the use of overreaching
claims by putative copyright holders to ownership of public domain works, and to exclusive rights
which they do not hold in copyrighted works -- present law provides few, if any, disincentives
against the practice -- need to restore balance in the copyright system -- three proposals put
forward -- strengthening section 512(f) of the Digital Millennium Copyright Act to provide a more
viable claim against those who make false representations to force the removal of allegedly
infringing content online -- forcing the adoption of an evenhanded approach to the assessment of
fees in copyright cases -- resurrecting a qui tam civil cause of action for false “markings” under the
Copyright Act in order to disincentivize the widespread use of fraudulent legal language
SNIPER Bulletin – March 2015
Page 12 of 60
Subject: Copyright--reform--United States
Subject: Intellectual property abuse--United States
SNIPER No.: 2015/00303
Author: International Chamber of Commerce
Title: Current and emerging intellectual property issues for business: a roadmap for business and
policy makers [electronic resource]
Source: ICC Intellectual Property Roadmap. 6th ed., 2005.
General Note: Sixth report in a series.
Abstract: Intellectual property basics for business leaders -- developments impacting IP protection
-- current and emerging issues relating to specific intellectual property rights -- patents -- trade
marks -- design -- copyright -- geographical indications -- plant variety rights (PVR) -- trade secrets
-- other forms of intellectual property and technologies -- issues common to various IP rights -enforcement -- exhaustion -- valuation -- diversion of registration fees -- interaction between
intellectual property and other policy areas -- proper use of IP rights for economic development -environment and biological diversity -- healthcare -- competition policy -- information society -- use
of open source software -- data privacy.
Subject: Intellectual property--policy
Subject: Intellectual property rights
SNIPER No.: 2015/00304
Author: International Chamber of Commerce
Title: Current and emerging intellectual property issues for business: a roadmap for business and
policy makers [electronic resource]
Source: ICC Intellectual Property Roadmap. 7th ed., 2006.
General Note: Seventh report in a series.
Abstract: Intellectual property basics for business leaders -- developments impacting IP protection
-- current and emerging issues relating to specific intellectual property rights -- patents -- trade
marks -- design -- copyright -- geographical indications -- plant variety rights (PVR) -- trade secrets
-- other forms of intellectual property and technologies -- issues common to various IP rights -enforcement -- counterfeiting and piracy -- exhaustion -- valuation -- diversion of registration fees -interaction between intellectual property and other policy areas -- proper use of IP rights for
economic development -- environment and biological diversity -- healthcare -- competition policy -information society -- use of open source software -- data privacy.
Subject: Intellectual property--policy
Subject: Intellectual property rights
SNIPER No.: 2015/00305
Author: International Chamber of Commerce
Title: Current and emerging intellectual property issues for business: a roadmap for business and
policy makers [electronic resource]
Source: ICC Intellectual Property Roadmap. 8th ed., 2007.
General Note: Eighth report in a series.
SNIPER Bulletin – March 2015
Page 13 of 60
Abstract: Intellectual property basics for business leaders -- developments impacting IP protection
-- current and emerging issues relating to specific intellectual property rights -- patents -- trade
marks -- design -- copyright -- geographical indications -- plant variety rights (PVR) -- trade secrets
-- other forms of intellectual property and technologies -- issues common to various IP rights -enforcement -- mediated or arbitrated dispute resolution -- counterfeiting and piracy -- exhaustion -valuation -- diversion of registration fees -- interaction between intellectual property and other
policy areas -- proper use of IP rights for economic development -- environment and biological
diversity -- public health -- competition policy -- information society -- use of open source software - data privacy.
Subject: Intellectual property--policy
Subject: Intellectual property rights
SNIPER No.: 2015/00306
Author: International Chamber of Commerce
Title: Current and emerging intellectual property issues for business: a roadmap for business and
policy makers [electronic resource]
Source: ICC Intellectual Property Roadmap. 9th ed., 2008.
General Note: Ninth report in a series.
Abstract: Intellectual property basics for business leaders -- developments impacting IP protection
-- current and emerging issues relating to specific intellectual property rights -- patents -- trade
marks -- design -- copyright -- geographical indications -- plant variety rights (PVR) -- trade secrets
-- other forms of intellectual property and technologies -- issues common to various IP rights -enforcement priorities -- mediated or arbitrated dispute resolution -- counterfeiting and piracy -exhaustion -- valuation, trading and securitisation -- diversion of registration fees -- client privilege
and IP professional advisors -- interaction between intellectual property and other policy areas -proper use of IP rights for economic development -- environment and biological diversity -- public
health -- competition policy -- information society -- use of open source software -- data privacy.
Subject: Intellectual property--policy
Subject: Intellectual property rights
SNIPER No.: 2015/00046
Author: International Chamber of Commerce
Title: Current and emerging intellectual property issues for business: a roadmap for business and
policy makers [electronic resource]
Source: ICC Intellectual Property Roadmap. 10th ed., 2010.
General Note: Tenth report in a series. Changed to biennial report from 2010. Title changed to
ICC Intellectual Property Roadmap in 2012.
Abstract: Intellectual property basics for business leaders -- developments impacting IP protection
-- current and emerging issues relating to specific intellectual property rights -- patents -- trade
marks -- design -- copyright -- geographical indications -- plant variety rights (PVR) -- data
exclusivity -- other forms of intellectual property and technologies -- issues common to various IP
rights -- enforcement priorities -- mediated or arbitrated dispute resolution -- counterfeiting and
piracy -- exhaustion -- valuation, trading and securitisation -- diversion of registration fees -- client
privilege and IP professional advice -- interaction between intellectual property and other policy
areas -- proper use of IP rights for economic development -- environment, biological diversity and
climate change -- technology development and transfer -- competition policy -- information society - use of open source software -- data privacy.
SNIPER Bulletin – March 2015
Page 14 of 60
Subject: Intellectual property--policy
Subject: Intellectual property rights
SNIPER No.: 2015/00047
Author: International Chamber of Commerce
Title: Current and emerging intellectual property issues for business: a roadmap for business and
policy makers [electronic resource]
Source: ICC Intellectual Property Roadmap. 12th ed., 2014.
General Note: Twelfth report in a series.
Abstract: Intellectual property basics for business leaders -- developments impacting IP protection
-- creating value from IP -- obtaining IP assets -- patents -- trade marks -- design -- copyright -domain names -- geographical indications -- plant variety rights (PVR) -- trade secrets and
confidential business information -- other forms of intellectual property and technologies -enforcement of IP rights -- enforcement priorities -- mediated or arbitrated dispute resolution -counterfeiting and piracy -- interaction between intellectual property and other policy areas -sustainable economic development -- environmental protection, biological diversity and climate
change -- innovation -- competition -- information society.
Subject: Intellectual property--policy
Subject: Intellectual property rights
SNIPER No.: 2015/00021
Author: Torelli, Valentina
Title: David versus Goliath chocolate trade mark dispute: does size count when applying the
concept of genuine use?
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 12, December 2014, pp. 963965.
Abstract: Dispute over use of the word Walzertraum which featured in two trade marks -- defined
concept of genuine use -- importance of comprehensive proof of use -- Reber Holding GmbH & Co
KG v OHIM, Wedl & Hofmann GmbH, C-141/13 P, EU:C:2014:2089, Court of Justice of the
European Union (CJEU), 17 July 2014 -- clarification of meaning of genuine use within EU -geographical and quantitative use of trade marks.
Subject: Trade mark use--case law--Europe
Subject: Commercial names--Europe
SNIPER No.: 2015/00028
Author: Musker, David C.
Title: Design crime: back to the future or forwards to the past?
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 12, December 2014, pp. 976985.
SNIPER Bulletin – March 2015
Page 15 of 60
Abstract: Intellectual Property Act of 2014 means that magistrates courts will deal with design
infringements -- examples of cases relating to design protection from 1842 in the magistrates
courts to 1877 in the higher courts -- issue of prior art -- burden of proof -- challenges for
magistrates under new legislation.
Subject: Industrial designs systems--United Kingdom
Subject: Infringement remedies--United Kingdom
SNIPER No.: 2015/00025
Author: Olmedo Cuevas, Míchel
Title: Developing a P2P program is not punished under Spanish law ... yet
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 12, December 2014, pp. 970972.
Abstract: Promusicae v Pablo Soto, Case No 103/2014, Court of Appeal of Madrid, Section 28, 31
March 2014 -- peer-to-peer software -- downloading of files that infringe copyright -- liability of P2P
developers for the acts of third parties -- difference between a centralised program and ones that
interconnect independent computers without making any active contribution to the exchange -- use
of warning message about exchanging copyright protected files.
Subject: Computer-related inventions--Spain
Subject: Copyright infringement--case law--Spain
Subject: Electronic copyright
SNIPER No.: 2014/01672
Author: Li, Xiao
Author: Xiong, Yanfeng
Author: Wu, Yuhe
Author: Li, Jiang
Author: Liu, Peng
Title: Dilemma with patent protection of software modules in China
Source: China Patents and Trademarks. Vol. 117 No. 2, April 2014, pp. 12-19.
Abstract: Constructing claims using means-plus-function -- securing wide protection for patent -Nokia v. Shanghai Huaqin Communication Technology Co., Ltd. -- prior art in relation to computer
programs -- defining scope of protection -- disclosure of the program algorithm -- functional claims - requirement to disclose hardware structure.
Subject: Information technology industry--China
Subject: Patent filing--analysis--China
SNIPER Bulletin – March 2015
Page 16 of 60
SNIPER No.: 2014/00896
Author: Wu, Rong
Title: Distribution of burden of proof in dispute over infringement of patent for process for making
non-new products
Source: China Patents and Trademarks. Vol. 115 No. 3, October 2013 pp. 37-41.
Abstract: Infringements of process patents -- burden of proof -- Yibin City Changyi Dissolving Pulp
Co., Ltd. (Changyi) v. Chengdu City Xinrixin Plastic Co., Ltd. (Xinrixin) and Weifang City Henglian
Wood Pulp Paper Co., Ltd. (Henglian) -- reversed burden of proof rule -- evidence adduction.
Subject: Patent infringement--case law--China
SNIPER No.: 2015/00027
Author: Mora González, Jesús Iván
Title: Does Allah belong exclusively to Islam?
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 12, December 2014, pp. 974975.
Abstract: Menteri Dalam Negeri v Titular Roman Catholic Archbishop of Kuala Lumpur, Case No
W-01-1-2010, Court of Appeal of Malaysia, Civil Appeal, 14 October 2013 -- Malaysian
Government prohibited use of certain words including the word 'Allah' in all religious publications
other than Islamic ones -- Herald: The Catholic Weekly continued to use the word 'Allah' and
brought a case to the High Court -- historic use of the word by Christian community -- likelihood of
confusion key element in granting exclusive right to Islam to use the word 'Allah' -- 'sweat of the
brow' theory -- expressive access to descriptive and generic words.
Subject: Public policy--Malaysia
SNIPER No.: 2015/00035
Author: Hoppe-Jänisch, Daniel
Author: Vakil, Bijal V.
Title: Drospirenon and Damping Unit: lifesaver for a German doctrine of equivalents or very old
wine in new skins?
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 12, December 2014, pp.
1017-1022.
Abstract: Difficulty in arguing equivalent infringement of a patent following two recent decisions of
the German Federal Court of Justice -- decision in Occlusion Device case and Drospirenon and
Damping Unit -- technical solutions included in patents -- waiver of rights -- German approach
incompatible with practice in United States.
Subject: Doctrine of equivalents--Germany
Subject: Patent infringement--case law--Germany
SNIPER No.: 2014/00903
Author: Chen, Jinchuan
Author: Jiao, Yan
Title: Elaboration on Beijing Higher People's Court's Patent Infringement Adjudication Guidelines
Source: China Patents and Trademarks. Vol. 116 No. 1, January 2014 pp. 8-15.
SNIPER Bulletin – March 2015
Page 17 of 60
Abstract: Determining extent of claims in infringement cases -- claim construction rules -- rules for
construing means-plus-function technical features -- environment use -- application of the
equivalent doctrine -- determination of substantially identical means as a starting point to apply the
equivalent doctrine -- extent of protection of designs -- indirect infringement -- quality of patent
documents - passing off.
Subject: Patent infringement--China
Subject: Legal procedure--China
SNIPER No.: 2014/01777
Author: Belson, Jeffrey
Title: Environmental trade marks
Source: Trademark Reporter. Vol. 104 No. 3, May-June 2014, pp. 822-826.
Abstract: Consumer demand for environmentally sound products -- increased applications for
registering of trade marks with environmental connections -- uncertainty of outcomes when
registering environmental marks -- perception of product quality -- mark's ability to convey
description information about its claim.
Subject: Environmental issues in intellectual property--United States
Subject: Trade mark applications--United States
SNIPER No.: 2013/02943
Author: Swann, Jerre B.
Title: The evolution of dilution in the United States from 1927 to 2013
Source: Trademark Reporter. Vol. 103 No. 4, 2013, pp. 721-774.
Abstract: Use of marks to identify maker traced back to Middle Ages in England -- trade marks as
identifiers -- increased distance between source and sale increased consumer reliance on trade
marks and names as a symbol of quality -- trade marks used as persuasive advertising -- gaps in
trade mark protection -- use of similar marks as unfair competition -- summaries of Lukens, Rogers
and Schecter papers on trade mark law -- application of Harvard School economics to trade mark
law -- State antidilution laws -- third party use of marks on non-competing goods -- contrast
between Chicago and Harvard School economics -- evolution of brands -- impact of the internet on
trade mark dilution -- federal response to increased need for dilution remedies -- use of consumer
surveys in dilution cases -- dilution of famous marks.
Subject: Trade mark dilution--law and legislation--United States
Subject: Trade mark distinctiveness--United States
SNIPER No.: 2015/00108
Author: Moir, Hazel V. J.
Title: The evolution of patent policy: redefining inventiveness
Source: Entrepreneurship, Innovation and Competitive Processes in Complex Economic Systems:
14th International Schumpeter Society Conference. 2-5 July 2012
SNIPER Bulletin – March 2015
Page 18 of 60
General Note: Also published on Social Science Research Network (SSRN).
Abstract: Patent and innovation policy -- Australia -- when a patent should be granted -- economic
perspectives -- development of patent law -- legal perspective on assessing novelty and
inventiveness -- existing knowledge -- overall balance and risks of error -- key legal decisions on
novelty and inventiveness -- rules to prevent obvious patents -- analogous use -- new uses of old
substances -- combinations and workshop equivalents -- patent policy and statute law.
Subject: Inventive step--Australia
Subject: Patent novelty--Australia
Subject: Patents--policy--Australia
Subject: Innovation (Technological)--policy--Australia
SNIPER No.: 2014/02112
Author: Zhu, Li
Title: Examination and determination of prior-design defence: logic and method
Source: China Patents and Trademarks. Vol. 119 No. 4, October 2014, pp. 84-89.
Abstract: Confusion over determining the difference between prior art and prior design defences -a design patent does not protect technical innovation, rather the aesthetic value -- examination of
overall visual images to determine whether they are identical or similar -- family resemblance
theory -- comparison between patented design, prior design and alleged infringing design -distinguishing features of patented design.
Subject: Industrial designs--China
Subject: Patent infringement--China
SNIPER No.: 2014/02192
Author: Park, Hyunseok
Title: The extraterritoriality of US patents on the pharmaceutical industry
Source: Pharmaceutical Patent Analyst. Vol. 3 No. 4, 2014, pp. 491-498.
Abstract: Overview of US Patent Act and case law -- response to Deep South Packing Co v
Laitram Corp resulted in Congress enacted additional sections to Section 271 which expanded
extraterritorial reach of US patents -- judicial interpretation of the term 'components' in Section
271(f) -- judicial application of Section 271(g) means the claims must recite physical, tangible
components capable of being combined.
Subject: Patent infringement--United States
Subject: Pharmaceutical industry--case law--United States
Subject: Globalisation
SNIPER No.: 2014/02107
Author: Luo, Xia
Title: Factors considered in assessing novelty of inventions relating to medical use of substance:
comments on Cubist Pharmaceuticals, Inc. v. PRB
SNIPER Bulletin – March 2015
Page 19 of 60
Source: China Patents and Trademarks. Vol. 118 No. 3, July 2014, pp. 106-112.
Abstract: Invalidation of patent relating to the administration of antibiotics -- Swiss type claims -IP protection for research in the pharmaceutical industry -- TRIPS agreement -- changes to the
EPC -- patenting of methods and treatment of diseases -- distinguishing first and second medical
uses -- assessing novelty of a patent.
Subject: Pharmaceuticals--patentability--China
Subject: Swiss-type claims--pharmaceutical industry
SNIPER No.: 2015/00014
Author: Johnson, Phillip
Title: Federalism and localisation in intellectual property law-making
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 12, December 2014, pp. 949950.
General Note: Scottish independence referendum -- effect of 'yes' vote on existing patents, trade
marks and designs -- European Patent Convention or TRIPS -- Federal power to make IP laws -EU Court of Justice of ruling copyright within power of EU not member states -- international
treaties relating to intellectual property law becoming more prescriptive -- state laws would allow
more flexibility for patent law -- federal power avoids creating internal barriers to trade.
Subject: Legal jurisdiction--Europe
Subject: Patent systems
SNIPER No.: 2014/02188
Author: Sklan, Alexandra
Title: First-to-invent versus first-to-file: impact of the AIA
Source: Pharmaceutical Patent Analyst. Vol. 3 No. 4, 2014, pp. 353-359.
Abstract: 2011 America Invents Act -- patents awarded to the first inventor to file a patent rather
than to the date of invention -- affects on pharmaceutical and medical R&D -- prior art -- differences
between the US and European systems -- use of public disclosure as a tool to prevent competitors
submitting patents -- accelerated timeline for provisional patent applications -- affect on small and
independent inventors -- affect on international patent law -- post-grant review process -- patent
rights under antitrust law -- affect on quality of patent applications filed -- affect on US patent
attorneys and practice -- dissatisfaction with high rate of reversal of claim constructions reviewed
by the Federal Circuit.
Subject: Intellectual property industry--interviews
Subject: Patent filing--United States
Subject: Provisional patent applications
Subject: Inventive step
SNIPER Bulletin – March 2015
Page 20 of 60
SNIPER No.: 2015/00171
Author: Daubin, Béatrice
Title: Forging ahead
Source: Intellectual Property Magazine. December 2014-January 2015, p. 38.
Abstract: CJEU judgement in case between Forge Laguiole and Gilbert Szajner -- descriptive
element of a trade mark may be the dominant element -- consumer confusion -- appeal against
decision in favour of Forge Laguiole may be lodged.
Subject: Trade mark dilution--case studies--France
Subject: Trade mark owners' rights--France
SNIPER No.: 2015/00170
Author: Ruffin, Nathalie
Author: Robert, Vincent
Title: France to amend its IP and heritage codes
Source: Intellectual Property Magazine. December 2014-January 2015, pp. 36-37.
Abstract: Increased term of protection of musical performer's rights -- use of orphan works -return of cultural objects to their homeland -- changes to contractual relationships between
performers and producers.
Subject: Neighbouring rights--France
Subject: Orphan works--France
Subject: Traditional cultural expressions--France
SNIPER No.: 2014/01651
Author: Mattsson, Niklas
Title: The future patent system of the European Union
Source: China Intellectual Property: comprehensive IP report on China. Vol. 59 No. 1-2, JanuaryFebruary 2014, pp. 72-75
Abstract: Agreement between member states of the EU on new unitary patent protection
legislation -- "bundle" patents -- European Patents Office can issue a patent covering 25 of the 28
EU member states without need for validation, known as "European Patent with Unitary Effect" or
"Unitary patent" -- use of translation software to translate unitary patents into all EU languages -establishment of a Unified Patent Court to remove need for parallel national litigation -- use of
transition periods -- cost of key user fees are not yet clear.
Subject: Patent owners' rights--Europe
Subject: Patent systems--Europe
SNIPER Bulletin – March 2015
Page 21 of 60
SNIPER No.: 2015/00191
Author: Meade, Alexandra
Author: Blakeney, Michael, 1948Title: GM v organic farming: Marsh v Baxter
Source: Bio-Science Law Review. Vol. 14, No. 2, 2014, pp. 48-56 .
Abstract: Adjudication of a claim by a WA organic farmer for economic loss because of the
harvesting practices of a neighbouring GM farmer -- first reported case of GM damages litigation
between farmers -- loss of organic status if exposed to GM material -- little can be done to avoid
GM contamination from natural processes -- presence of GM material can lessen the value of
organic products in other markets worldwide -- little Australian case law -- compensation for loss
under tort law -- duty of care -- regulation of genetically modified organisms -- Federal regulation
under the Gene Technology Act 2000 (Cth) and Gene Technology Regulations 2001 (Cth) -neither act nor state legislation provides statutory immunity to farmers who comply with GM
regulations but cause damage to others -- judicial finding in favour of GM farmer dismissing claims
of negligence and private nuisance – key finding that the loss was without precedent and that no
basis in principle had been shown to extend the law regarding pure economic loss to the events -closest Australian precedent Perre v Apand -- limitation of the Marsh case to be used as a
precedent in future -- inflexibility of NASAA guidelines for organic certification.
Subject: Genetic modification--case law--Australia
Subject: Genetic modification--agriculture industry
Subject: Farmers' rights
SNIPER No.: 2015/00188
Author: England, Paul
Author: Royle, Matthew
Author: Coster, Christoph de
Title: Going full circle: Bolar in Europe and the UPC
Source: Bio-Science Law Review. Vol. 14 No. 2, 2014, pp. 31-39.
Abstract: Patents can prevent manufacturers of generic drugs from entering the market -application of the experimental use exemption -- Monsanto v Stauffer case in the UK held that
exempted experiments are those that generate new knowledge, not verify existing knowledge -German Supreme Court ruled on experimental use exemption in Clinical Trials I and II -- impact of
German decision on English law in CoreValve v Edwards Lifesciences -- Bolar exemption
ambiguous -- not implemented uniformly in EU -- German, French and Italian Bolar provisions are
broad, not distinguishing between marketing authorisations for general and innovative drugs -- in
the UK and Netherlands, only studies prepared for an abridged application for marketing
authorisation by a generic are covered -- question of whether offer and sale of a patent protected
API by a third party to a generic company is covered by Bolar -- UPC interpretation of Bolar
awaited.
Subject: Experimental use (Patents)--law and legislation--Europe
Subject: Patents--pharmaceutical industry--Europe
Subject: Harmonisation of laws--Europe
SNIPER Bulletin – March 2015
Page 22 of 60
SNIPER No.: 2015/00169
Author: Kaye, Laurence
Title: 'Google tax' and online content wars
Source: Intellectual Property Magazine. December 2014-January 2015, pp. 34-35.
Abstract: Conflict between online news aggregators and the news industry -- new laws in Spain
and Germany take different approaches to press publishers' rights and aggregator activities -statutory limitation to copyright -- 'Lex Google'.
Subject: Culture and entertainment industry
Subject: Internet--law and legislation--Spain
Subject: Internet--law and legislation--Germany
SNIPER No.: 2015/00034
Author: Königs, Martin
Title: The Guidelines on technology transfer agreements: the second edition and its
consequences on patent pools
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 12, December 2014, pp.
1012-1016.
Abstract: Division of evaluation between pool agreements and licensing agreements under new
Technology Transfer Guidelines -- a new safe harbour with several main conditions established:
pool creation must be open to every patent owner, exclusive integration of essential patents for
bundled licensing, exchange of sensitive information between competitors, non-exclusive licensing
of patents into the patent pool, licensing on air, reasonable and non-discriminatory terms,
challenges to pooled patents validity -- members of patent pool allowed to develop alternative
technologies.
Subject: Patent pools
Subject: Technology transfer
SNIPER No.: 2014/01644
Author: Nie, Kevin
Title: Having a good start: interview with Du Changhui, Presiding Judge at IP Tribunal of the
Beijing Third Intermediate People's Court
Source: China Intellectual Property: comprehensive IP report on China. Vol. 59 No. 1-2, JanuaryFebruary 2014, pp. 32-34.
Abstract: Court established in 2013 in response to an increasing number of cases -- Tribunal
administers 6 districts: Chaoyang, Tongzhou, Shunyi, Huairou, Pinggu, and Miyun County -covering most aspects of IP -- IP tribunals hear civil cases of first instance -- IP Tribunal consists of
10 members -- prominence of cases relating to foreign companies -- setting of precedent cases.
Subject: Du, Changhui--interviews
Subject: Intellectual property systems--law and legislation--China
Subject: Intellectual property management--China
SNIPER Bulletin – March 2015
Page 23 of 60
SNIPER No.: 2014/01677
Author: Han, Yuanmu
Author: Wu, Lijuan
Title: Hidden danger in application of "non bis in idem doctrine" in patent invalidation examination
and solution thereof.
Source: China Patents and Trademarks. Vol. 117 No. 2, April 2014, pp. 63-69.
Abstract: Patent law prevents multiple actions for invalidation with the same reasons and
evidence -- 'straw man' requests -- legislative aim of non bis in idem -- comparison of non bis in
idem doctrine in Japan, Republic of Korea, Taiwan regions and Europe -- limiting qualified
requesters -- limited number of specific conditions for application of 'same reasons, same
evidence'.
Subject: Patent validity--law and legislation--China
Subject: Patent applications--China
SNIPER No.: 2015/00026
Author: Smith, Joel
Author: Horsey, Victoria
Author: Bottle, Emily
Title: High Court of Ireland clarifies correct approach to assessing an account of profits for
passing off cases
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 12, December 2014, pp. 972974.
Abstract: McCambridge Limited v Joseph Brennan Bakeries [2014] IEHC 269, High Court of
Ireland, 27 May 2014 -- account of profits should only encompass the profits attributable to the
passing off, rather than all profits generated from sales of the product during the period of
infringement -- ruling that the award should be based on sales attributable to the unintentional
passing off of the product following the packaging switch -- extent of infringement -- pre-existing
sales of product by defendant before the infringement.
Subject: Account of profits--case law--Ireland
Subject: Passing-off--Ireland
Subject: Brand confusion
SNIPER No.: 2015/00018
Author: Keston, Susan
Title: How is patent eligibility of computer-implemented inventions to be determined in the United
Sates in view of Alice v CLS Bank?
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 12, December 2014, pp. 956958.
Abstract: No statutory exclusion from patentability of computer programs or business methods in
US -- context of patent eligibility -- computerised trading platforms -- patentability of subject matter
-- application of two-part test for patent eligibility referred to finding in Mayo and Bilski cases -defining abstract idea, generic computer and inventive concept to be patent eligible -- Alice
Corporation Pty Ltd v CLS Bank International and others, Docket no 13-298, Supreme Court of the
United Sates, 19 June 2014.
SNIPER Bulletin – March 2015
Page 24 of 60
Subject: Computer-related inventions--patentability--United States
Subject: Business methods--patentability--United States
SNIPER No.: 2014/01679
Author: Gui, Lin
Author: Duan, Liyan
Author: Song, Steve
Author: Wei, Lixian
Title: How to use PPH to expedite prosecution in China
Source: China Patents and Trademarks. Vol. 117 No. 2, April 2014, pp. 84-89.
Abstract: Applying for patents in more than one country -- multilateral and bilateral PPH's -advantages of PPH -- requirements to register a PPH -- expedited prosecution of patents -importance of correct filing -- IP5 Patent Prosecution Highway (IP5PPH) pilot program -- concept of
office of first filing and office of second filing.
Subject: Patent examination--procedure--China
Subject: Patent applications--law and legislation--China
SNIPER No.: 2015/00043
Author: International Business Machines Corporation
Added author: Melbourne Institute of Applied Economic and Social Research
Title: IBM-Melbourne Institute Innovation Index of Australian Industry 2007 [electronic resource]
Source: IBM-Melbourne Institute Innovation Index of Australian Industry. 1st ed., 2007.
General Note: First report in a series.
Abstract: Inter-industry, multi-indicator approach to measuring the rate of innovative activity in
Australia -- six different dimensions of innovation -- innovation in Australian industry increased from
late 1990 -- index components -- breakdown by industry -- mining -- manufacturing -- utilities -construction -- wholesale trade -- retail trade -- transport and storage -- communication services -finance and insurance -- property and business services -- cultural and recreational services -personal and other services -- health and community services -- research methodology -- industrial
classifications and definitions -- economic indicators.
Subject: Innovation (Technological)--Australia
SNIPER No.: 2015/00044
Author: International Business Machines Corporation
Added author: Melbourne Institute of Applied Economic and Social Research
Title: IBM-Melbourne Institute Innovation Index of Australian Industry 2008 [electronic resource]
Source: IBM-Melbourne Institute Innovation Index of Australian Industry. 2nd ed., 2008.
General Note: Second report in a series.
SNIPER Bulletin – March 2015
Page 25 of 60
Abstract: Inter-industry, multi-indicator approach to measuring the rate of innovative activity in
Australia -- six different dimensions of innovation -- innovative activity in Australian industry
tapering off -- index components -- breakdown by industry -- mining -- manufacturing -- utilities -construction -- wholesale trade -- retail trade -- transport and storage -- communication services -finance and insurance -- property and business services -- cultural and recreational services -personal and other services -- health and community services -- comparing innovation by business
size -- research methodology -- data issues relating to business size -- industrial classifications and
definitions -- economic indicators.
Subject: Innovation (Technological)--Australia
SNIPER No.: 2015/00045
Author: International Business Machines Corporation
Added author: Melbourne Institute of Applied Economic and Social Research
Title: IBM-Melbourne Institute Innovation Index of Australian Industry 2009 [electronic resource]
Source: IBM-Melbourne Institute Innovation Index of Australian Industry. 3rd ed., 2009.
General Note: Third report in a series.
Abstract: Inter-industry, multi-indicator approach to measuring the rate of innovative activity in
Australia -- six different dimensions of innovation -- innovative activity in Australian industry
flattening -- index components -- breakdown by industry -- mining -- manufacturing -- utilities -construction -- wholesale trade -- retail trade -- transport and storage -- communication services -finance and insurance -- property and business services -- cultural and recreational services -personal and other services -- health and community services -- innovation and the global financial
crisis (GFC) -- research methodology -- data issues relating to business size -- industrial
classifications and definitions -- economic indicators.
Subject: Innovation (Technological)--Australia
SNIPER No.: 2013/02948
Author: Awakessien Jeter, Ukeme
Title: ICANN Dot-anything: rethinking the scope of the new gTLD expansion, its effect on
government regulation, and its impact on trademark owners
Source: Trademark Reporter. Vol. 103 No. 4, 2013, pp. 962-988.
Abstract: Evolution of Internet governance -- belief that extra gTLDs would increase competition -arguments for and against domain name expansion -- defensive registration of domain names -need for adequate trade protection mechanisms -- objections can be lodged against a TLD
application, both pre and post delegation -- dispute resolution service -- Trademark Clearinghouse
-- lessening government burden under US Federal tax law -- costs vs benefits of new system -dilution of a brand.
Subject: Domain name dispute resolution
Subject: Trade mark dilution
Subject: Trade mark owners' rights
SNIPER No.: 2012/03061
Added author: IP Australia
Title: Implementing the TRIPS protocol: IP Australia consultation paper [electronic resource]
Source: Implementing the TRIPS protocol: IP Australia Consultation Paper. 2007.
SNIPER Bulletin – March 2015
Page 26 of 60
Abstract: The TRIPS Protocol enables least-developed and developing countries deal with health
crisis such as an HIV/AIDS, malaria or influenza epidemic -- the Protocol permits WTO members to
issue compulsory licences to manufacturers to produce patented products for export to address the
health need -- IP Australia released a public consultation paper on 22 April 2010 outlining the
proposed model for implementing the Protocol in Australia -- submissions due by 4 June 2010
Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994 April 15)-Australia
Subject: Compulsory licensing--pharmaceutical industry--Australia
SNIPER No.: 2015/00103
Author: Dreyfuss, Rochelle Cooper, 1947Title: Implications of the DNA patenting dispute: a US response to Dianne Nicol
Source: New York University School of Law Public Law and Legal Theory Research Paper Series.
No. 13-17, April 2013.
Abstract: Patentability of DNA -- United States -- response to original Nicol article -- whether the
gene patent problem is transient -- what can be concluded from the evidence -- policy implications
-- need for the United States to take more notice of developments in other jurisdictions.
Subject: Gene patents--United States
Subject: Patents--law and legislation--United States
SNIPER No.: 2014/01780
Author: Mahanta, Sanjeev K.
Title: Indefiniteness
Source: IDEA: the Intellectual Property Law Review. Vol. 54 No. 3, 2014, pp. 479-514.
Abstract: Recent dissatisfaction with the US Federal Circuit's indefiniteness standard -- US
Supreme Court reviewing Federal Circuits indefiniteness standard in Nautilus Inc v Biosig
Instruments Inc -- Supreme and Federal courts have two different tests for determining
indefiniteness -- application of the 'insolubly ambiguous' standard -- indefiniteness has led to
increased litigation -- prevalence of patents with unclear property rights -- Federal Circuit's
presumption of validity of an issued patent -- USPTO determine indefiniteness based on Ex Parte
Miyazaki -- US Supreme Court recently overturned the 'insolubly ambiguous' standard and
replaced it with 'reasonable certainty'.
Subject: Patent expiry--case law--United States
Subject: Patent enforcement
SNIPER No.: 2014/01675
Author: Wang, Haicai
Title: Integrity principle and contemplated improvement of law provisions concerning
determination of patent amendment going beyond scope
Source: China Patents and Trademarks. Vol. 117 No. 2, April 2014, pp. 45-48.
SNIPER Bulletin – March 2015
Page 27 of 60
Abstract: Revision of patent applications during prosecution -- legal requirements -- analysis of the
Chinese Guidelines for Examination -- integrity doctrine -- scope of amendments -- case of Taixi
Group.
Subject: Patent amendment--China
Subject: Patent examination--China
SNIPER No.: 2014/00902
Author: Zhang, Guangliang, 1970Title: Intellectual property right protection from perspective of trade
Source: China Patents and Trademarks. Vol. 115 No. 4, October 2013 pp. 99-102.
Abstract: Relationship between international trade and IP rights protection -- disparity between
TRIPS and ACTA -- free trade versus intellectual property rights -- enforcing IP rights in the
domestic market.
Subject: Intellectual property rights--China
Subject: International trade
SNIPER No.: 2014/02190
Author: Komatani, Takeshi S.
Title: Intellectual property strategy for regenerative medicine: is it time to 'regenerate'?
Source: Pharmaceutical Patent Analyst. Vol. 3 No. 4, 2014, pp. 475-479.
Abstract: The IP rights over regenerative medicine products are mainly protected by patents
comparison of legislation in Japan, USA and Europe -- use of cellular therapies -- requirements of
ordre public -- peripheral products involved in regenerative medicine such as culture media,
biological markers etc should also be considered in patent applications
Subject: Patenting of life forms
Subject: Biotechnology industry--United States
Subject: Biotechnology industry--Japan
Subject: Biotechnology industry--Europe
SNIPER No.: 2015/00174
Author: Dreyfus, Nathalie
Title: Internet registrars on the radar
Source: Intellectual Property Magazine. December 2014-January 2015, pp. 42-43
Abstract: Registrar found liable for breach of copyright in Germany -- registrar liable for actions of
website owners -- duty to act when there is an infringement of IP rights -- closure of sites -- online
piracy -- comparison to US, France and the UK.
Subject: Copyright owners' rights--Germany
Subject: Internet--law and legislation--Germany
Subject: Carriage service providers--liability--Germany
SNIPER Bulletin – March 2015
Page 28 of 60
SNIPER No.: 2014/01648
Author: Yang, Jin
Author: Li, Ning
Title: IP protection for magic art: reality and possibility
Source: China Intellectual Property: comprehensive IP report on China. Vol. 59 No. 1-2, JanuaryFebruary 2014, pp. 60-63.
Abstract: Under China's copyright law, protection for magical works is covered under acrobatic
works -- discussion about copyright when a trick is revealed -- difficult to protect creativity -question of whether magic tricks are functional skills which cannot be protected by copyright -possibility of using patents to protect a magician's creativity -- drawback of patents to protect magic
tricks is the requirement of public disclosure -- suitability of using trade secret law to protect
creative magical works -- use of industry associations to regulate magic arts.
Subject: Moral rights--China
SNIPER No.: 2014/01641
Author: Yang, Stella
Title: IP protection in the internet age: interview with John Alty, CEO of United Kingdom
Intellectual Property Office
Source: China Intellectual Property: comprehensive IP report on China. Vol. 59 No. 1-2, JanuaryFebruary 2014, pp. 25-27.
Abstract: China and UK agreement signed in 2013 'A declaration on joint patent prosecution
highway (PPH) pilot program' -- the legal framework of IP needs to be modernised to adapt to the
new Internet environment -- preventing copyright infringement on the Internet -- cooperation
between countries to combat online piracy -- balance between IP protection and innovation -China establishing IP tribunals or courts.
Subject: Alty, John--interviews
Subject: Internet
Subject: Intellectual property management--China
Subject: Intellectual property management--United Kingdom
Subject: Trade regulation
SNIPER No.: 2015/00190
Author: O'Connell, Kim
Author: Ellsmore, James
Author: Naylor, Tom
Title: Isolated nucleic acid sequences patentable in Australia: D'Arcy v Myriad Genetics Inc
Source: Bio-Science Law Review. Vol. 14, No. 2, 2014, pp. 43-47.
SNIPER Bulletin – March 2015
Page 29 of 60
Abstract: BRCA gene patents -- Federal Court confirmed patentability of isolated nucleic acid
sequences in Australian law -- Australian decision contrasted to United States Supreme Court
which held that genes and the information they encode are not patent eligible -- Myriad owns
patents worldwide to protect its diagnostic technology detecting genetic susceptibility to breast and
ovarian cancer -- claim to isolated nucleic acids and not to nucleic acids in their naturally occurring
state within the cell, critical to validity -- First Instance decision of Justice Nicholas regarding
validity of claims 1 to 3 of Myriad patent -- Full Bench decision that the invention in claims 1 to 3
was a manner of manufacture because it resulted in an artificially created state of affairs with an
economic benefit -- reaffirmed principles set down in National Research Development Corporation
v Commissioner of Patents -- difference between the isolated gene and one in situ -- argument to
preclude isolated nucleic acids from patentability as they are part of the human body itself -distinction between the discovery of a law of nature and its application to a novel and economically
useful purpose -- currently awaiting High Court decision whether to accept the case on appeal.
Subject: Gene patents--Australia
Subject: Gene patents--United States
Subject: Patenting of life forms
SNIPER No.: 2015/00023
Author: Giannino, Michele
Title: The Italian Supreme Court confirms that it is upon resellers to prove lawful importation of
trade marked products into the EU
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 12, December 2014, pp. 965966.
Abstract: Distillerie Bagnoli SNC di Bagnoli Giovanni e C v Jack Daniel's Properties Inc and
Martini e Rossi Spa, Case no 5722/2014, Court of Cassation, First Chamber, Judgment of 12
March 2014 -- international exhaustion of trade marks -- verification of trade marked products first
marketed outside the EU -- infringement of exclusive rights -- purchase in good faith -- parallel
importation -- evidentiary standards.
Subject: Trade mark exhaustion
Subject: Legal jurisdiction--case law
Subject: Parallel importing--Europe
SNIPER No.: 2015/00160
Author: Heizler, Laurie
Title: Landmark judgment means ISPs can block online counterfeiters
Source: Intellectual Property Magazine. December 2014-January 2015, p. 15.
Abstract: Cartier and Ors v British Sky Broadcasting Ltd and Ors -- offering of counterfeit goods
for sale online -- infringing websites to be blocked by ISPs upon receipt of appropriate notification - use of blocking orders for copyright works.
Subject: Counterfeiting--case law--United Kingdom
Subject: Electronic commerce--United Kingdom
SNIPER Bulletin – March 2015
Page 30 of 60
SNIPER No.: 2014/00895
Author: Liu, Xiaojun
Title: Latest developments in adjudication of IP cases by Beijing Higher People's Court in 2012:
(abridged part on trade mark): the IP Tribunal of the Peijing Higher People's Court
Source: China Patents and Trademarks. Vol. 115 No. 4, October 2013 pp. 16-32.
Abstract: Protection of prior legitimate right -- likelihood of consumer confusion -- Coca Cola v.
Trademark Review and Adjudication Board (TRAB) -- negative influence on public interest -Aptalis Pharma Limited v. TRAB -- trade marks consisting or containing a geographical name -generic names -- distinctive character of trade marks -- trade marks including foreign languages -well-known trade marks -- difficulties in translation -- use of words or phrases from the Internet -re-examination of trade mark opposition -- trade mark prior rights -- protection of trade names -evidence of prior copyrights -- interpretation fraudulent registration -- determining scope in
certification trade mark infringement cases -- determining damages -- accepting additional
evidence in litigation cases.
Subject: Trade marks--case law--China
Subject: Trade mark infringement--China
SNIPER No.: 2014/02100
Author: Liu, Xiaojun
Title: Latest developments in adjudication of IP cases by Beijing Higher People's Court in 2013:
(Abridged part on patent): the IP Tribunal of the Beijing Higher People's Court
Source: China Patents and Trademarks. Vol. 118 No. 3, July 2014, pp. 9-17.
Abstract: Breakdown of cases by type heard by the Beijing Higher People's Court during 2013 -Qualcomm v. PRB -- determination of essential technical features -- Markush claims -- narrowing
of scope of protection of patent -- Markush claims existing in prior art -- claims relating to
compounds -- inventiveness -- Beijing Winsunny Pharmaceutical Industry Co., Ltd. v. PRB and
Daichi Sankyo Company Ltd. -- distinguishing technical features or prior art -- technical solutions
conforming to Article 26 -- carbon nanotube film structures -- "kite-flying mechanism" -- patent
invalidation procedures -- Tsinghua University and Foxconn Refining Industry (Shenzhen) Co., Ltd.
V. PRB -- judicial examination procedures -- Starlinger &. Co. Gmbh v. PRB and Changzhou City
Hengcheng Plastic Machinery Co., Ltd
Subject: Patent validity--case law--China
Subject: Science and research industry--China
SNIPER No.: 2014/02108
Author: Liu, Xiaojun
Title: Latest developments in adjudication of IP cases by Beijing Higher People's Court in 2013:
(Abridged part on patent): the IP Tribunal of the Beijing Higher People's Court
Source: China Patents and Trademarks. Vol. 119 No. 4, October 2014, pp. 10-18.
Abstract: Signs similar or identical to state names -- distinctive character acquired through long
term use -- distinctiveness of 3D trademarks -- combining a well-known mark with a generic name
of it's goods -- non-use of trade marks -- using names of movies and TV programs in trade marks - application for a trade mark while business license is cancelled.
Subject: Patent validity--case law--China
Subject: Intellectual property--case law--China
SNIPER Bulletin – March 2015
Page 31 of 60
SNIPER No.: 2015/00157
Author: Serio, John
Author: Susan, Janine
Title: Let the food fights begin
Source: Intellectual Property Magazine. December 2014-January 2015, p. 11.
Abstract: Supreme Court ruling in Pom Wonderful (POM) application to sue Coca Cola over
mislabelled juice drinks -- Lanham Act -- false advertising -- unfair competition -- Unilever v.
Hampton Creek case -- ingredients in a food product -- definition of a term used on product and in
advertising -- consumer confusion -- monitoring of a competitors labelling and marketing -- FDA
regulations -- decision in POM case could also affect cosmetics and over-the-counter products.
Subject: Trade dress--law and legislation--United States
Subject: Marketing--United States
Subject: Branding--United States
SNIPER No.: 2014/01640
Author: Tan, Emily
Title: Let the world hear China's IP voice: interview with Tian Lipu, former Commissioner of SIPO
Source: China Intellectual Property: comprehensive IP report on China. Vol. 59 No. 1-2, JanuaryFebruary 2014, pp. 22-24.
Abstract: The IP system in China was first established in the 1980's -- Tian Lipu worked on IP for
32 years -- China's accession to WTO was turning point for Chinese IP -- importance of IP in China
-- innovation as the driving force behind change to traditional unsustainable economic development
-- new Trademark Law enacted in 2013 and amendments of Copyright and Patent Laws are
ongoing, bringing China in line with international practice -- IP protection still a problem -exploration of specialised IP courts -- Western reaction to Chinese IP environment.
Subject: Tian, Lipu--interviews
Subject: Intellectual property systems--China
Subject: Intellectual property awareness--China
SNIPER No.: 2013/02717
Author: Buccafusco, Christopher
Title: Making sense of intellectual property law
Source: Intellectual Property Law Review. Vol. 45, 2013, pp. 645-692.
General Note: Originally published in: Cornell Law Review Vol. 97 No. 3, March 2012 pp. 501-548.
Abstract: Difficult to explain the boundaries of and differences between copyright and patent law -proposal of a novel explanation -- copyright and patent can be fruitfully understood as establishing
a dichotomy between two different groups of human senses -- copyright traditionally involves
objects addressed to the senses of sight and hearing while products appealing to touch, taste, and
smell are the province of utility patent law -- contest areas of IP, such as copyright's useful articles
doctrine and design patent law, involve breaches of this sensory dichotomy -- effect on creative
fields.
Subject: Intellectual property law--philosophy
SNIPER Bulletin – March 2015
Page 32 of 60
SNIPER No.: 2013/02947
Author: Liebesman, Yvette Joy
Author: Wilson, Benjamin
Title: The mark of a resold good
Source: Trademark Reporter. Vol. 103 No. 4, 2013, pp. 913-961.
Abstract: Mary Kay Inc. v. Weber -- selling genuine products in a secondary market -- internet
reselling -- controlling distribution channels -- first sale doctrine -- Lanham Act -- consumer
confusion over affiliation -- alleged contributory infringement by ISPs -- selling repackaged, used or
repaired goods does not constitute infringement provided full disclosure is made -- nominative fair
use -- first sale/exhaustion principle -- different interpretation of Internet sales and consignment
and resale shops -- procedural difficulties in bringing a class action under trade mark law.
Subject: Electronic commerce
Subject: Brand management
SNIPER No.: 2014/00907
Author: Duan, Liyan
Author: Yang, Cunji
Title: Motivation and lack of motivation: tentative examination of interaction between closest prior
art and distinguishing technical features
Source: China Patents and Trademarks. Vol. 116 No. 1, January 2014 pp. 58-60.
Abstract: Three step test of inventiveness of patent -- examination of claims and searching for
prior art -- under Chinese Patent Law, inventiveness means that the invention represents a notable
progress on previous items of same or similar kind.
Subject: Inventive step--China
SNIPER No.: 2014/00904
Author: Jiang, Liwei
Title: New evidence in patent grant and affirmation administrative cases
Source: China Patents and Trademarks. Vol. 116 No. 1, January 2014 pp. 22-30.
Abstract: Submission of supplementary evidence in patent grant and affirmation administrative
cases -- requests for patent invalidation -- court determinations on admissibility of evidence -Administrative Procedural law -- disputes over known technical terms -- allowance for interested
parties to produce new evidence -- acceptable new evidence: general knowledge, experiment data,
commercial success, grace period for novelty, reinforcing -- enforcement of time limits.
Subject: Administrative law--China
Subject: Doctrine of equivalents
Subject: Evidence
SNIPER No.: 2014/02094
Author: Dickson, Gareth
Title: Now is the time for review
Source: World Trademark Review. No. 51, October-November 2014, pp. 108-109.
SNIPER Bulletin – March 2015
Page 33 of 60
Abstract: Issues for United Kingdom (UK) rights holders with online domain expansion -- Internet
Corporation for Assigned Names and Numbers (ICANN) and the introduction of new gTLDs difference in popularity of gTLDs -- Trademark Clearinghouse Claims Service -- difference between
Uniform Domain Name Dispute Resolution Policy (UDRP) and the Uniform Rapid Suspension
(URS) proceedings -- many worldwide cases have favoured keyword service providers over trade
mark owners -- global brand owners need to be aware of issues in many jurisdictions -developments in preparation for Round Two applications -- rights holders need to be prepared.
Subject: Domain name registration--United Kingdom
Subject: Brand management--United Kingdom
SNIPER No.: 2014/02103
Author: Yao, Jianjun
Title: On correspondence among multiple independent claims and basic principles thereof
Source: China Patents and Trademarks. Vol. 118 No. 3, July 2014, pp. 55-59
Abstract: Multiple independent claims under Patent Law -- unity of invention -- parallel
independent claims -- independent claims connected in a series -- mutually incompatible claims -application of basic principles to infringement litigation -- analysis of Harbin Polytechnic University
Xinhe Industry Co., Ltd v. Runde Corporation.
Subject: Patent examination--China
Subject: Patent claims--China
SNIPER No.: 2014/01674
Author: Zhang, Rongyan
Title: On "means plus function" (continued): questions and recommendations.
Source: China Patents and Trademarks. Vol. 117 No. 2, April 2014, pp. 37-41.
General Note: See also 2013/01727 On "means plus function"
Abstract: Patent examination procedure -- construction and use of means plus function -Shenzhen City Bike Battery Co., Ltd. v. Shenzhen Huayuebao Battery Co., Ltd. -- method claims -means plus function in Chinese patent law -- comparison to US patent law.
Subject: Patent examination--case law--China
Subject: Patent examination--procedure--United States
SNIPER No.: 2014/00911
Author: Zhang, Rongyan
Title: "One invention, two applications": discussion on relevant issues
Source: China Patents and Trademarks. Vol. 116 No. 1, January 2014 pp. 94-98.
Abstract: China allows filing of applications for a utility model patent and an invention patent for
the same invent on the same day -- China's utility model is increasingly appealing to foreign
applicants and such applications are on the rise -- use of an invalidation request if patentee needs
to abandon one of their two patent rights -- decision of Beijing Higher People's Court in 2005
challenged the issue of one invention, two applications -- contrasts between Chinese and
European patent law -- preventing double-patenting.
SNIPER Bulletin – March 2015
Page 34 of 60
Subject: Minor patents--China
Subject: Patent applications
SNIPER No.: 2014/02090
Author: Cappai, Andrea
Title: One way or another
Source: World Trademark Review. No. 51, October-November 2014, pp. 100-101.
Abstract: Protecting rights holders brands online -- increasing popularity of e-commerce in Italy -solutions to counterfeiting and digital piracy online -- role of the Italian Antitrust Authority (AGCM)
in the fight against counterfeiting -- Italian Communication Regulatory Authority (AGCOM) and its
role in protecting rights holders -- involvement of internet service providers (ISP) -- beneficial
developments for the protection of rights holders.
Subject: Brand management--Italy
Subject: Internet--management--Italy
Subject: Piracy--Italy
Subject: Counterfeiting--Italy
SNIPER No.: 2014/00910
Author: Jiang, Helen H.
Title: Original grant patent system expected to be introduced in Hong Kong
Source: China Patents and Trademarks. Vol. 116 No. 1, January 2014 pp. 87-90.
Abstract: Hong Kong issues two types of patents, standard and short-term -- system reviewed
after handover to China -- aim to make Hong Kong a regional innovation and technology hub -proposal submitted to Legislative Council in early 2013 with plans to implement original grant
patent (OGP) system, retain the short-term patent system and develop a fully-fledged regulatory
system on patent agency services -- cost effectiveness of an OGP system for Hong Kong.
Subject: Patent applications--Hong Kong
Subject: Minor patents--Hong Long
SNIPER No.: 2014/01649
Author: Hong, Lou
Title: Overseas protection of Chinese trade marks under the WTO regime
Source: China Intellectual Property: comprehensive IP report on China. Vol. 59 No. 1-2, JanuaryFebruary 2014, pp. 64-67.
Abstract: Limited protection of Chinese trade marks internationally -- Chinese trade marks are not
well known outside China -- increasing number of Chinese trade marks being passed off and
registered by other companies -- case of Bosch-Siemens registering "HiSense" to prevent the
Chinese Hisense Company registering their trade mark in the EU -- Most Favoured National (MFN)
and National Treatment (NT) principles -- conflict with a mark of repute -- WTO dispute settlement
system.
Subject: Trade mark owners' rights--China
Subject: Trade mark infringement
SNIPER Bulletin – March 2015
Page 35 of 60
SNIPER No.: 2014/00897
Author: Meng, Pu
Author: Li, Jiang
Author: Du, Shanshan
Author: Yin, Longzhi
Title: An overview of third amendment to the Trademark Law
Source: China Patents and Trademarks. Vol. 115 No. 3, October 2013 pp. 46-52.
Abstract: Third amendment addresses inadequacies and incompatibilities in current law -- other
forms of trade marks can be registered -- trade marks can be filed for registration under several
classes of goods -- applications can be filed electronically -- amendment of applications during
approval procedure -- simplified opposition procedure -- restriction on qualification of opponents -time limits applied for prosecution of applications -- definition of 'uses of a trade mark' -cancellation of trade marks that have become generic names -- standards for establishment of
well-known trade marks -- exclusive and prohibitive rights -- increased penalties for infringement -burden of proof for rights holders -- exemptions from liability for damages -- administration of trade
mark agencies.
Subject: Trade marks--law and legislation--China
Subject: Trade mark registrability--law and legislation--China
SNIPER No.: 2014/01680
Author: Ling, Zongliang
Title: Ownership of right in service inventions made in execution of tasks assigned by ones'
entities not subject to contracts
Source: China Patents and Trademarks. Vol. 117 No. 2, April 2014, pp. 94-100.
Abstract: Article 6, para 3 of Patent Law -- Shanghai Angfeng Mining Machinery Technology Co.,
Ltd v. Qian Ming -- patent ownership dispute between employer and employee -- service inventions
-- attributing ownership of service inventions -- workplace contracts -- ownership of results of
research & development -- employee rights and interests.
Subject: Patent entitlement--case law--China
Subject: Inventors' rights--China
SNIPER No.: 2014/01772
Author: Fletcher, Anthony L.
Title: The paradox of aesthetic functionality
Source: Trademark Reporter. Vol. 104 No. 3, May-June 2014, pp. 731-743.
Abstract: US Trademark Act (Lanham Act) does not contain a definition of the terms 'function' or
'functionality' -- something that is functional cannot be registered or trade marked -- Pagliero v
Wallace China Co Ltd -- Boston Professional Hockey Ass'n Inc v Dallas Cap & Emblem Mfg Inc -Int'l Order of Job's Daughters v Lindeburg & Co -- opposition between findings in Jobs Daughters
and Boston Professional Hockey -- defensive aesthetic functionality as a valid defence -- Betty
Boop case.
Subject: Trade mark ownership--case law--United States
Subject: Trade mark infringement--case law--United States
Subject: Trade mark use--case law--United States
SNIPER Bulletin – March 2015
Page 36 of 60
SNIPER No.: 2014/02193
Author: Höpfner, Sebastian
Title: Patent filing strategies for pharmaceuticals in Europe
Source: Pharmaceutical Patent Analyst. Vol 3, No. 6, 2014, pp. 563-565.
Abstract: High cost of innovation versus low cost of imitation of marketable drugs -- necessity of
active protection of product -- maximisation of patent protection for pharmaceuticals -- strategic
patent filing in Europe -- sequential filing of patent applications to accompany the different R&D
process stages -- patent coverage of the dosage and treatment regimens mean a generics
company cannot easily design around it -- third party opposition.
Subject: Patent applications--pharmaceutical industry--Europe
Subject: Intellectual property management--pharmaceutical industry--Europe
SNIPER No.: 2015/00083
Author: Oldham, Paul D.
Author: Hall, Stephen
Author: Barnes, Colin
Author: Hoffman, Irene
Author: Boettcher, Paul John
Added author: Food and Agriculture Organization of the United Nations.
Added author: World Intellectual Property Organization
Title: Patent landscape report on animal genetic resources [electronic resource]
Source: Patent Landscape Reports. October 2014.
General Note: Prepared in cooperation with the Food and Agriculture Organization of the United
Nations (FAO) for WIPO's Patent Landscape Reports Project as part of the WIPO Development
Agenda.
Abstract: Animal genetic resources -- patent landscape report -- research objectives and context - policy background -- access and benefit sharing -- approaching intellectual property -- defining
the landscape -- methods -- mapping technology clusters -- network mapping for new breeds of
animals and biotechnology -- developing a patent indicator for animal genetic resources -- key
technologies in animal breeding -- animal breeds in patent data -- pigs -- cattle -- sheep and goats - equine -- avian -- patent landscape search strategy.
Subject: Patents--analysis
Subject: Patents--agriculture industry
Subject: Patenting of life forms
SNIPER No.: 2014/01645
Author: Dou, Xiarui
Author: Huang, Dehai
Title: Patent prosecution highway and its application
SNIPER Bulletin – March 2015
Page 37 of 60
Source: China Intellectual Property: comprehensive IP report on China. Vol. 59 No. 1-2, JanuaryFebruary 2014, pp. 40-43.
Abstract: PPH is only an accelerating mechanism for applicants to facilitate the examination
process, not a mechanism of mutual recognition among countries -- two different types of PPH,
conventional or PCT-PPH -- PPH advantages for applicants in participating countries includes
accelerated examination; certainty; and reduced prosecution costs -- SIPO bilateral agreements
with 12 countries -- participating countries have different provision for the filing of PPH requests -first-to-file -- PPH Mottainai model -- PPH particularly suitable for fast-changing technologies and
those that have a large number of overseas patent applications.
Subject: Patent examination--procedure--China
Subject: Patent processing--procedure--China
Subject: International patent applications
SNIPER No.: 2014/02161
Author: Hino, Mami
Title: Patent term extension in Japan: recent IP High Court Grand Panel decision
Source: AIPPI: Journal of the Japanese Group of AIPPI. Vol. 39 No. 5, September 2014, pp. 307313
Abstract: Unique patent term extension system in Japan -- Genentech Inc v the Japan Patent
Office (2013 (gyo-ke) Nos. 10195-10198) -- compensation for patent applicant for time waiting for
disposition and cannot practice the patented invention -- The Japan Patent Act -- examination
guidelines -- revised examination guidelines for patent and utility models -- awaiting Supreme
Court decision on how Article 67-3, para 1, Item 1 of the Act should be construed.
Subject: Patent extension--Japan
Subject: Legal procedure
Subject: Minor patents
SNIPER No.: 2015/00104
Author: Moir, Hazel V. J.
Author: Palombi, Luigi
Title: Patents and trademarks: empirical evidence on 'evergreening' from Australia
Source: 4th Asia-Pacific Innovation Conference. 6-7 December 2013
General Note: Also published on Social Science Research Network (SSRN).
Abstract: Intellectual property evergreening -- Australia -- background -- patents and evergreening
-- role of trade marks -- research methodology -- finding related pharmaceutical patents -desvenlafaxine, metabolite (Wyeth/Pfizer, Efexor and Efexor-FX) -- citalopram/escitalopram,
enantiomer (Lundbeck, Cipramil and Lexapro) -- clopidogrel, enantiomer and combinations
(Sanofi-Aventis, Plavix, CoPlavix, Duocover, DuaPlavix and Dualplavix) -omeprazole/esomeprazole, enantiomer with enteric coating (Astra-Zeneca, Losec and Nexium) -atorvastatin, statin (Pfizer, Lipitor, Catatin, Caudet, and Cadupine) -- alendronate or alendronic
acid, biophosphonate (Merck, Fosamax) -- risendronate or risendronic acid (Warner-Chilcott,
Actonel) -- cefuroxime, antibiotic (Glaxo, Fortum and Zinnat) -- discussion of findings and policy
parallels -- variant compounds -- combinations of known things -- whether evergreen patents leads
to health improvements -- methods of medical treatment -- marketing -- predatory generic entry -using patent data for policy analysis -- use of innovation patents for evergreening -- potential
effects of Trans-Pacific Partnership Agreement (TPP).
SNIPER Bulletin – March 2015
Page 38 of 60
Subject: Evergreening--pharmaceutical industry--Australia
Subject: Patents--pharmaceutical industry--Australia
Subject: Trade marks--pharmaceutical industry--Australia
SNIPER No.: 2015/00189
Author: Michel, Sara
Author: Mester, Gabor
Title: Poisonous divisionals: any end in sight?
Source: Bio-Science Law Review. Vol. 14, No. 2, 2014, pp. 40-42.
Abstract: Divisional applications may represent prior art relevant to the novelty of subject matter
under Article 54(3) EPC -- priority claims -- split priority -- multiple priorities may be claimed for any
one claim -- split priority of numerical ranges denied -- clarification needed on G2/98, point 6.7 of
Enlarged Board of Appeal finding.
Subject: Divisional applications (Patents)--Europe
SNIPER No.: 2014/00898
Author: Wang, Fang
Title: Possibility for trade mark cancelled for non-use to obtain retroactive judicial protection
Source: China Patents and Trademarks. Vol. 115 No. 4, October 2013 pp. 57-63.
Abstract: Xu Bin v Nanjing Auto Group Co., Ltd and Beijing Gongjiao Haiyijie Auto Service Co.,
Ltd. -- non-use of trade marks -- trade mark protection -- use of identical marks for goods and
services.
Subject: Trade mark cancellation--case law--China
Subject: Trade mark use--case law--China
SNIPER No.: 2014/02189
Author: Altman, Daniel E.
Author: Sweeney, Christopher T.
Author: Yasui, Yakuya
Title: Preparing effective experimental data for pharmaceutical patent applications from US and
Japanese perspectives
Source: Pharmaceutical Patent Analyst. Vol. 3 No. 5, 2014, pp. 469-473.
SNIPER Bulletin – March 2015
Page 39 of 60
Abstract: Recent advances in technology and understanding of how small molecule drugs interact
with the human body has made it more difficult to obtain patents for pharmaceutical inventions -increased use of pharmacological data to obtain patents -- standards of experimental data required
to gain regulatory approval are often different from those required to obtain patent protection -America Invents Act (AIA) -- additional emphasis placed on early filing under the first-inventor-tofile system now in place in the USA -- guidance on filing strategies for pharmaceutical R&D -importance of including as much experimental data as possible at initial filing in the US, in Japan to
include sufficient data to support claims and evidence of unexpected results over the prior art in the
application field -- confidentiality of experimental data -- utilising the grace period -- use of double
patenting -- unnecessary disclosure of compounds can compromise later R&D strategy -- method
of treatment claims not allowed in Japan -- difficulty of showing that a new dosage, formulation or
compound combination is different from prior art and are non-obvious -- USA has few restrictions
on data filed after original claim, but the JPO may regard it as new matter -- importance of
recognising the requirements of other countries when applying for international patents.
Subject: Pharmaceutical industry--research
Subject: Patent processing--United States
Subject: Patent processing--Japan
Subject: Patent extension
SNIPER No.: 2014/01647
Author: Sun, Guohui
Author: Li, Bin
Title: Priority verification in different phases during patent examination
Source: China Intellectual Property: comprehensive IP report on China. Vol. 59 No. 1-2, JanuaryFebruary 2014, pp. 56-59.
Abstract: Concept of priority and its effect as defined in Articles 4a and 4b of the Paris Convention
-- there is no mandatory requirement in patent statutes or regulations for substantive examination
of patent priority -- substantive verification -- case analysis of Koninklijke Philips NV where
application names were different -- case analysis of Meishang VIA Telecom where the prior
application contained omissions -- case analysis of Focke & Co (GmbH) where invalidation was
requested due to lack of novelty and inventiveness -- difficulty in verifying priority.
Subject: Patent priority--case law--China
SNIPER No.: 2014/02111
Author: Li, Jiang
Author: Wang, Jinjing
Author: Xiong, Yanfeng
Author: Wu, Yuhe
Author: Wen, Dapeng
Author: Yang, Kai
Author: Ke, Ke
Author: Wang, Gang
SNIPER Bulletin – March 2015
Page 40 of 60
Author: Li, Rongxin
Author: Meng, Pu
Author: Chan, Ran
Author: Zhang, Dongli
Author: Li, Xiao
Author: Chen, Hongxu
Title: Probing into practice relevant to implied patent license in China
Source: China Patents and Trademarks. Vol. 119 No. 4, October 2014, pp. 72-78.
Abstract: Patent law has no specific provisions regarding implied patent licenses -- establishment
of an implied contractual relationship between patentee and licensee -- implied patent licenses
usually used as a defence against infringement -- examples of cases where the implied patent
license defence has been used -- rules on the disclosure and use of patent information in a
technological standard not established in China -- Provisional Rules on Patent Related National
Standards stipulates that organisations or persons involved in setting a Standard should disclose
patent ownership -- use of implied patent licenses in the sale of raw materials.
Subject: Patent licensing--China
Subject: Patent infringement--case law--China
SNIPER No.: 2015/00030
Author: Subramaniam, Ganesan
Author: Daivasigamani, Deepa
Title: Protecting incremental invention in India
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 12, December 2014, pp. 993998.
Abstract: Amendments to Indian patent legislation regarding TRIPS -- mixed response to Indian
patent law and product patent protection rulings -- discussion of Novartis v Union of India (Glivec),
Roche v Cipla (Tarceva), and Merck v Glenmak (Januvia) -- drug development, optimisation and
approval can consume almost all the patent life -- use of 'evergreening' as a tactic to extend the life
of a patent -- refusal of patent protection for secondary patents in developing countries -- generic
drug manufacturers increasingly challenging validity of innovator drug companies.
Subject: Pharmaceutical industry--India
Subject: Evergreening--India
Subject: Patent extension--India
SNIPER No.: 2014/00899
Author: Zhou, Yunchuan
Title: Protection of copyright in applied art
Source: China Patents and Trademarks. Vol. 115 No. 4, October 2013 pp. 71-78.
SNIPER Bulletin – March 2015
Page 41 of 60
Abstract: Franz Corporation v. Jialande -- works of fine art -- question of protection for applied art
under Chinese copyright law -- scope of protection -- whether mass produced ceramics constitute
works of art -- Berne Convention for the Protection of Literary and Artistic Works -- judicial
judgments handed down in cases involving applied art -- consensus that Chinese copyright law
offers protection for works of applied art -- no separation between artistic character and practical
application -- comparison of copyright protection in the United States and Japan -- case studies of
items classed as applied art that come under copyright protection in China -- utilitarian function
versus works of applied art -- standards for finding infringement -- Lego cases in 1999 -- unfair
competition.
Subject: Copyright infringement--case law--China
Subject: Artistic works--case law--China
SNIPER No.: 2015/00307
Added author: IP Australia
Title: Public consultation: proposals to streamline IP processes and support small business
[electronic resource]
Source: Proposals to Streamline IP Processes and Support Small Business. February 2015.
Abstract: Proposed changes to the Australian intellectual property system -- IP Australia placing
high priority on aligning and streamlining processes, improving service delivery and reducing
unnecessary delays -- aim to make administration of the system more efficient for users of the
system, particularly small businesses, and for IP Australia -- input on a number of proposed
changes to the IP rights systems to help achieve these aims -- input requested a number of
proposed changes to the IP rights systems to help achieve these aims -- consultation paper
outlines 22 proposals to align and simplify IP processes, support small business and make some
technical fixes relating to the regulation of IP attorneys -- the costings paper outlines the costing
framework used and detailed costings for each of the proposals in the consultation paper -comments requested on the assumptions and costings for these proposals -- submissions needed
by 7 April 2015 .
Subject: Intellectual property systems--reform--Australia
SNIPER No.: 2013/02944
Author: Senftleben, Martin
Title: Public domain preservation in EU trademark law: a model for other regions?
Source: Trademark Reporter. Vol. 103 No. 4, 2013, pp. 775-827.
Abstract: Balance between trade mark protection and the public domain -- legal definition for
material to be considered 'public domain' it must be unencumbered by intellectual property rights -trade mark law and market transparency -- limited protection for public domain under trade mark
law -- acquired distinctiveness from use in trade -- unconditional exclusion of signs from trade mark
protection -- limitations of exclusive rights -- signs of cultural significance -- harmonisation of trade
mark law in the EU -- protection for non-traditional marks -- linking grounds for refusal to the
preservation of the public domain -- trade marking portraits and photographs -- third party use
under EU trade mark law -- use of the 'due cause' defence.
Subject: Trade mark dilution--law and legislation--Europe
Subject: Public domain--Europe
SNIPER Bulletin – March 2015
Page 42 of 60
SNIPER No.: 2014/01678
Author: Sun, Guorui
Author: Bo, Liang
Title: Questioning rationality of and necessity for incorporating Droit de Suite in copyright law
Source: China Patents and Trademarks. Vol. 117 No. 2, April 2014, pp. 74-79.
Abstract: Concept and nature of droit de suite -- differing views on droit de suite -- protection of
copyright owners' rights -- introduction of droit de suite system in China -- amendments to Chinese
copyright law -- value of fairness and justice in law -- protection of artistic works -- feasibility of
introducing droit de suite.
Subject: Droit de suite--China
Subject: Copyright owners' rights--China
SNIPER No.: 2014/00906
Author: Li, Xiang
Author: Zhu, Ling
Author: Wen, Mei
Author: Dai, Lingli
Title: Reflection on "technical problems actually solved by inventions" in inventive step
assessment
Source: China Patents and Trademarks. Vol. 116 No. 1, January 2014 pp. 51-54.
Abstract: Three step test for determining the obviousness of claimed inventions -- problems in
identifying distinguishing technical features -- use of the problem-solution test -- comparison with
EPO provisions.
Subject: Inventive step--China
Subject: Patent examination
SNIPER No.: 2015/00113
Author: Estevadeordal, Antoni
Author: Suominen, Kati
Author: Volpe Martincus, Christian
Added author: International Centre for Trade and Sustainable Development
Added author: World Economic Forum
Added author: E15 Expert Group on Regional Trade Agreements and Plurilateral Approaches
Title: Regional trade agreements: development challenges and policy options [electronic
resource]
Source: Regional Trade Agreements: Development Challenges and Policy Options December
2013.
General Note: "The E15 Initiative - strengthening the global trade system".
SNIPER Bulletin – March 2015
Page 43 of 60
Abstract: Contribution of regional trade agreements (RTAs) to global trading system -- whether
regionalism versus multilateralism is a false choice -- whether RTAs comply with multilateral trade
rules -- World Trade Organization (WTO) versus RTAs as trade creating arrangements -- RTAs as
part of the WTO -- challenges and opportunities -- convergence, multilateralisation and other
innovations -- policy recommendations -- sharing of regional best practice -- new negotiation
strategies for multilateralising regionalism -- facilitating trade with rule convergence.
Subject: World Trade Organization
Subject: Trade
Subject: International trade
Subject: Free trade
SNIPER No.: 2015/00020
Author: Sherliker, Tristan
Title: The registered layout: a new type of trade mark for Apple
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 12, December 2014, pp. 961963.
Abstract: Apple, Inc v Deutsches Patent - und Markenamt, C-421/13, ELCI:EU:C:2014:2070,
Court of Justice of the European Union (Third Chamber), 10 July 2014 -- registration of the layout
of a retail store was accepted in the USA but not considered registrable in the EU -- Apple
registered two 3D layouts in the US in January 2013 -- registration based on distinctiveness
acquired through use -- protection refused by majority of jurisdictions under the Madrid protocol on
basis that application was not a distinctive character -- Apple appeal to German
Bundespatentgericht referred to CJEU -- CJEU ruled that a 3D trade mark consisting of the shape
of a retail store is registrable -- confirmed that indications of size and proportion does not matter.
Subject: Shape marks
Subject: Trade mark registrability--case law--Germany
Subject: Trade mark distinctiveness
SNIPER No.: 2015/00029
Author: Prud'homme, Dan
Title: Rethinking what international patenting really says about Chinese innovation
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 12, December 2014, pp. 986992.
Abstract: Assessment of quality and value of Chinese patents -- Chinese patents filed abroad -increase in patents filed abroad after 2000 -- more invention patents than utility models have been
filed by Chinese residents -- Chinese subsidy for patents filed abroad -- international filings only a
small proportion of domestic Chinese filings -- more utility models filed domestically than abroad -unhealthy innovation trajectory in China -- no substantive examination conducted before utility
models are granted -- research indicates that some utility models are only filed to claim subsidies
or tax breaks -- small number of triadic patent filings by Chinese entities.
Subject: International patent applications--China
Subject: Minor patents
SNIPER Bulletin – March 2015
Page 44 of 60
SNIPER No.: 2015/00167
Author: Ohta, Tom
Title: Review of the year: copyright
Source: Intellectual Property Magazine. December 2014-January 2015, pp. 29-30.
Abstract: Most significant copyright cases in 2014 -- trends for 2015 -- CJEU interpretations of EU
directives on digital technology -- linking or framing freely accessible content without the
rightholder's authorisation is permissible -- copyright protection for computer software -- exhaustion
of distribution rights -- harmonisation scope and conditions of copyright exceptions in the EU -definition of 'parody' -- copying for private use -- use of intermediaries to reduce online
infringements -- problem of jurisdiction in international online distribution of material that infringes
copyright -- reform of existing copyright law.
Subject: Copyright infringement
Subject: Electronic rights management
Subject: Copyright infringement
SNIPER No.: 2015/00165
Author: James, Will
Author: Hayes, Jake
Title: Review of the year: patents
Source: Intellectual Property Magazine. December 2014-January 2015, pp. 24-26.
Abstract: Most significant cases in the UK during 2014 -- trends for 2015 -- stay of national
proceedings pending outcome of EPO proceedings -- non-infringement declarations effective
outside the UK -- file wrapper estoppel -- illegality defence -- approach to what constitutes common
general knowledge -- obviousness in pharmaceutical patents -- supplementary protection
certificate decisions by the CJEU -- employee compensation -- summary judgements.
Subject: Patent litigation--United Kingdom
Subject: Patents--case law--United Kingdom
SNIPER No.: 2015/00166
Author: Cordell, Neville
Author: Woolgar, Alex
Title: Review of the year: trademarks
Source: Intellectual Property Magazine. December 2014-January 2015, pp.27-28 .
Abstract: Most significant UK and European trade mark cases in 2014 -- trends for 2015 -expansion of trade mark protection -- impact of the Internet -- 3D trade marks -- confusion and
unfair advantage -- Internet keywords -- value of survey evidence - proposed changes to
legislation.
Subject: Trade mark law--Europe
Subject: Trade marks--trends--Europe
Subject: Trade mark law--United Kingdom
Subject: Trade marks--trends--United Kingdom
SNIPER Bulletin – March 2015
Page 45 of 60
SNIPER No.: 2014/01775
Author: Moskin, Jonathan
Title: Roll over Gutenberg, tell Mr Hull the news: obstacles and opportunities from 3D printing
Source: Trademark Reporter. Vol. 104 No. 3, May-June 2014, pp. 811-816.
Abstract: Additive manufacturing process in 3D printing -- mass production of items using 3D
printing -- use of CAD files -- value added opportunity of 3D printing permits -- infringement of third
party rights -- trading of product designs via the Internet -- design patents to prevent digital copying
-- limited protection for unregistered designs under Lanham Act.
Subject: Three dimensional printing--United States
Subject: Intellectual property rights--analysis--United States
SNIPER No.: 2014/02194
Author: Komatani, Takeshi S.
Title: Scope of protection of a patent directed to prodrugs, metabolites and the like
Source: Pharmaceutical Patent Analyst. Vol 3, No. 6, 2014, pp. 567-570.
Abstract: Modified form of drug to overcome solubility issues or to produce a more resistant form
sometimes called 'prodrugs' -- effect of Mayo and Myriad decisions -- narrower interpretation of
scope of extended patents in Japan -- issues surrounding patent protection when a drug is
metabolised -- doctrine of equivalents -- no court precedents in Japan dealing with metabolite
issues -- possible protection of indirect or induced/contributory infringement -- in vivo conversion
theory -- Zenith Laboratories v. Bristol Myers-Squibb Co. -- protecting metabolites under patent -prior art issues.
Subject: Pharmaceuticals--case law--United States
Subject: Research and development--Pharmaceutical industry--Japan
SNIPER No.: 2014/01642
Author: Yang, Stella
Title: Seeking common ground to cooperate: interview with Randall R. Rader, Chief Judge of
United States Court of Appeals for the Federal Circuit
Source: China Intellectual Property: comprehensive IP report on China. Vol. 59 No. 1-2, JanuaryFebruary 2014, pp. 28-29.
Abstract: Differences in the IP system between America and China although the basic principles
are the same -- necessity of cooperation between countries -- proper value of IP -- patents and
copyright given a higher value in America than in China -- Non-practicing Entity (NPE) not
encouraged in America -- importance of Chinese companies acquiring good patents.
Subject: Rader, Randall R.--interviews
Subject: Intellectual property systems--China
Subject: Intellectual property systems--United States
SNIPER Bulletin – March 2015
Page 46 of 60
SNIPER No.: 2014/00901
Author: He, Huaiwen
Author: Yuan, Denghua
Title: Selected cases heard by Supreme People's Court in 2012
Source: China Patents and Trademarks. Vol. 115 No. 4, October 2013 pp. 92-96.
Abstract: Registration of a mark in violation of Article 31 of Chinese trade mark law -- definition of
similar marks under Article 28 -- 'similar goods' clarified in finding of Hangzhou Woodpecker Shoe
Industry Co., Ltd. v. TRAB, Qihao (Group) Co., Ltd -- use of famous and/or distinctive names -protecting Chinese time honoured brands -- family businesses.
Subject: Trade mark ownership--case law--China
Subject: Trade mark distinctiveness--China
SNIPER No.: 2013/02718
Author: Almeling, David S.
Title: Seven reasons why trade secrets are increasingly important
Source: Intellectual Property Law Review. Vol. 45, 2013, pp. 695-721.
General Note: Originally published in: Berkeley Technology Law Journal, Vol. 27 No. 2, Fall 2012,
pp. 1091-1117.
Abstract: Trade secrets becoming more important -- boom in litigation, legislation and in media
and scholarly attention -- produced large damages awards and government pursuit of criminal
investigations -- identification of seven factors behind this phenomenon -- digital technology -- a
mobile workforce -- the rising value of intellectual property, of which trade secrets are a part -- the
widespread adoption of the Uniform Trade Secrets Act -- trade secrets, flexible definition -- an
increase in international threats -- the shifting calculus between whether to pursue patent or trade
secret protection -- uncertain whether each of these factors will continue to fuel trade secret growth
remains uncertain -- these seven trends suggest that the business of trade secrets will only
assume greater importance in the future.
Subject: Trade secrets--trends--United States
SNIPER No.: 2014/02110
Author: Jiao, Yan
Title: Several important issues in determination of infringement by equivalents
Source: China Patents and Trademarks. Vol. 119 No. 4, October 2014, pp. 46-57.
Abstract: Supreme People's Court applied the doctrine of equivalents for the first time in 2001 -examination of technical features of claims to determine infringement -- uncertainty over inclusion
of numerical values and ranges under a doctrine of equivalents -- examination of functional
features under a doctrine of equivalents -- differing judicial views on the use of estoppel -introduction of a dedication doctrine in 2009.
Subject: Doctrine of equivalents--interpretation--China
Subject: Patent infringement--China
SNIPER Bulletin – March 2015
Page 47 of 60
SNIPER No.: 2014/02092
Author: Rabah, Yasmine
Title: ('.shabaka')-a new gTLD in Arabic
Source: World Trademark Review. No. 51, October-November 2014, pp. 104-105.
Abstract: Strategies for brand owners given the new Arab language top-level domain ('.shabaka') - rapid growth of Arabic content on the internet -- ('.shabaka') translates as '.web' -- first Arabic
generic top level-domain (TLD) -- The DotShabaka Registry runs the gTLD -- implications for
companies -- strategies for firms -- not buying the domain names -- purchase domain names for
later -- purchase domains and use them -- most companies purchase the domain names and use
them to redirect traffic to an existing website.
Subject: Brand management--Middle East
Subject: Domain name registration--Middle East
Subject: Domain name registries--Middle East
SNIPER No.: 2015/00158
Author: Simpson, Haydn
Title: Smartphone generation
Source: Intellectual Property Magazine. December 2014-January 2015, p. 12.
Abstract: Counterfeit goods bought and sold on the internet -- criminal exploitation of new
technologies -- fraud on social media -- use of apps on smartphones and tablets -- UK IPO's IP
Crime Highlight Report 2013/4 -- brand or trade mark owner's responsibility to monitor the
marketplace for infringement -- increasing use of fake apps -- using social media to engage with
consumers -- use of social media to damage a brands' reputation.
Subject: Electronic commerce
Subject: Fraud
Subject: Brand management
SNIPER No.: 2015/00163
Author: Givoni, Sharon
Title: Social media, misleading or deceptive conduct and the law
Source: Intellectual Property Magazine. December 2014-January 2015, pp. 19-20.
Abstract: Seafolly Pty Ltd v Madden and Nextra Australia Pty Ltd v Fletcher -- legal consequences
of disparaging comments made about a company on social media -- companies in direct
competition with each other seeking to influence the attitudes of consumers via social media -online statements and offline reactions can create liability -- blog posts can be found to be
misleading or deceptive in the context of trade or commerce -- involvement in a particular industry
does not prohibit the self publishing of articles relating to that industry -- fine line between
information and opinion.
Subject: User-generated content--litigation
Subject: Fashion and design industry
SNIPER Bulletin – March 2015
Page 48 of 60
SNIPER No.: 2014/00943
Author: Shao, Wei
Author: Chi, Shaojie
Title: Standard-essential patent license viewed from Huawei v. IDG
Source: China Patents and Trademarks. Vol. 116 No. 1, January 2014 pp. 101-103.
Abstract: Globalisation of technology and economy has resulted in the development of standardessential patents -- compliance with technical standards -- differences in judicial interpretation of
essential patents -- applying the FRAND principle -- exploitation of the standard-essential patent -seeking remedy under a standard-essential patent
Subject: Standards (Technical)
Subject: Patent applications
SNIPER No.: 2015/00015
Author: Hayes, Christopher
Title: Stem cell patents: limiting the application of Brüstle?
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 12, December 2014, pp. 951952.
Abstract: Findings of International Stem Cell Corporation v Comptroller General of Patents Case
C-364/13, Court of Justice of the European Union (CJEU), Opinion of Advocate General Cruz
Villalón, 17 July 2014 -- EU Directive 98/44 -- legal protection of biotechnological inventions -- use
of embryos for industrial or commercial purposes -- difference between human embryos and
parthenotes -- genetic manipulation -- redefinition of boundaries of patentability of stem cell
technologies.
Subject: Research on life forms
Subject: Patentability
Subject: Intellectual property law
Subject: Legal procedure--Europe
SNIPER No.: 2014/02113
Author: Song, Haining
Title: A story of battling giants: comments on GoerTek Acoustics v. Knowles Electronics
Source: China Patents and Trademarks. Vol. 119 No. 4, October 2014, pp. 98-102.
Abstract: Global dispute between GoerTek and Knowles over MEMS microphones -- infringement
lawsuits in China and the US -- Chinese court handed down decision in favour of GoerTek,
judgment awaited in US -- record amount of damages awarded -- Knowles required to stop
manufacturing the infringing product -- injunction the default remedy for patent infringement under
Chinese Tort and Patent law -- US courts have adopted a more flexible standard regarding
injunctions -- power of Chinese utility model patents -- using patents to compete globally.
Subject: Patent infringement--case law--China
Subject: Injunctions--China
SNIPER Bulletin – March 2015
Page 49 of 60
SNIPER No.: 2014/02091
Author: Ponce González, Carolina Julieta
Title: Strategies beyond registration
Source: World Trademark Review. No. 51, October-November 2014, pp. 102-103.
Abstract: Essential for business owners to obtain a domain name -- Mexico has a straightforward
system for domain name registration and management -- role of Network Information Centre
Mexico (NIC MEXICO) -- divisions created by NIC MEXICO -- AKKY. MX -- how to register a
domain name -- dispute resolution over '.mx' domain names -- important advice to rights holders in
Mexico with regard to domain names.
Subject: Cybersquatting--Mexico
Subject: Domain name registration--Mexico
Subject: Domain name registries--Mexico
Subject: Domain name dispute resolution--Mexico
SNIPER No.: 2014/02095
Author: Stabbe, Mitchell H.
Title: A strategy in five easy pieces
Source: World Trademark Review. No. 51, October-November 2014, pp. 110-111.
Abstract: Decisions that need to be taken in developing a plan for policing marks in the new
generic top-level domains (gTLDs) -- deciding on action or a wait and see approach -- choosing
marks to register with the Trademark Clearinghouse -- deciding on how many marks and which
gTLD registries -- sunrise registrations -- registering second-level domains (SLDs) and the
Trademark Clearinghouse -- choosing a trade mark rights protection mechanism (RPMs) -- not too
late to develop a trade mark protection policy in the new gTLDs.
Subject: Trade mark owners' rights
Subject: Domain name registration
Subject: Brand management
SNIPER No.: 2014/02104
Author: Ke, Ke
Author: Wu, Yuhe
Author: Li, Jiang
Author: Xiong, Yanfeng
Author: Zhao, Sulin
Author: Yang, Kai, 1963Author: Wang, Jinjing
Author: Legal Affairs Department of China Patent Agent (H.K.) Ltd
Title: A study on amendment to Markush claims in invalidation proceedings
Source: China Patents and Trademarks. Vol. 118 No. 3, July 2014, pp. 66-73.
SNIPER Bulletin – March 2015
Page 50 of 60
Abstract: Defining Markush claims -- overview of PRB's examination procedure -- chemical
compounds -- parallel technical solutions -- relevant international practice -- court decisions on
deletion of Markush elements -- EPO disallows deletion of Markush elements in opposition
proceedings -- Chinese judicial opinion on the deletion of Markush elements from a Markush claim.
Subject: Patent claims--China
Subject: Patent examination--procedure--China
SNIPER No.: 2014/01646
Author: Zhang, Hongqiang
Title: A study on the scheme of nominative fair use of trade marks
Source: China Intellectual Property: comprehensive IP report on China. Vol. 59 No. 1-2, JanuaryFebruary 2014, pp. 44-49.
Abstract: New Kids on the Block v News America Publishing -- three factors for nominative fair
use of trade marks: the product or service cannot be readily identified without using the trade
mark; the user only uses as much of the mark as is necessary for identification -- the user does
nothing to suggest sponsorship or endorsement by the trade mark holder -- deficiencies in the test
analysed using Toyota Motor Sales v Tabari -- Cairns v Franklin Mint Co. (Princess Diana's
personal effects) -- Volkswagenwerk Akiengesellschaft v Church (Volkswagen) -- Prestonettes, Inc
v Coty (Coty perfumes) -- use of copyrighted names in domain names -- use of a likeness as fair
use -- likelihood of consumer confusion -- right to use the trade mark.
Subject: Fair use (Trade marks)--case law
SNIPER No.: 2014/02105
Author: Bu, Yuanshi
Title: Summary of trademark license-related judicial practice in China
Source: China Patents and Trademarks. Vol. 118 No. 3, July 2014, pp. 80-88.
Abstract: Uncertainty in Chinese trade mark law over trade mark licensing -- third party use of
trade marks -- differentiation between recording of a license and validity of license contracts -repeated licensing -- exclusivity licenses -- rights to license -- disputes over licensing of
unregistered trade marks -- fraudulent use of a trade mark -- breach of contract -- damages -termination of licenses.
Subject: Trade mark licensing--China
Subject: Trade mark use--case law--China
SNIPER No.: 2014/02089
Author: Narula, Ranjan
Title: Taking a balanced approach
Source: World Trademark Review. No. 51, October-November 2014, pp. 98-99.
Abstract: Managing domain names as part of business strategy -- Internet Corporation for
Assigned Names and Numbers (ICANN) and the expansion of the domain name space -- India and
registration under '.in.' -- complaints under the '.in' Domain Dispute Resolution Policy (INDRP) -court decisions -- clarification of forum choice -- significant cost of new gTLDs -- modest
registration of available options probably the best strategy.
SNIPER Bulletin – March 2015
Page 51 of 60
Subject: Domain name registration--India
Subject: Brand management--India
SNIPER No.: 2015/00019
Author: Clark, Birgit
Title: Three colours red?: CJEU rules on contourless colour trade marks
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 12, December 2014, pp. 958961.
Abstract: German Federal Patent Court referred case to CJEU -- abstract contourless trade marks
must not be treated differently than other non-distinctive marks -- proof of acquired distinctiveness
through use -- member states must not assess acquired distinctiveness solely on a fixed
percentage of consumer recognition -- colour trade marks are registrable under certain conditions - assessment must take into account all relevant factors and circumstances -- burden of proof
concerning distinctiveness when there is an invalidity challenge rests with the proprietor of the
mark -- possibility of acquired distinctiveness post-registration -- Oberbank and Santander, Joined
Cases C-217/13 and C-218/13, Court of Justice of the European Union, EU:C:2014:2012, 19 June
2014.
Subject: Trade mark distinctiveness--Germany
Subject: Colour marks--Germany
SNIPER No.: 2013/02946
Author: Junko, Izumi
Title: Three-dimensional trademark registration in Japan
Source: Trademark Reporter. Vol. 103 No. 4, 2013, pp. 895-911.
Abstract: Protection of 3D marks -- source identification requirement -- likelihood of confusion -marks lacking distinctive character cannot be registered -- application of Article 3(1)(iii) of
Japanese trade mark law -- consumers must be able to recognise a shape as being connected to a
particular business -- determining if the trade mark or the shape distinguishes the goods -- use of
recognition surveys -- Hermès application to trade mark shape of Birkin and Kelly handbags -- few
precedents for 3D trade mark registrations -- acquired distinctiveness.
Subject: Shape marks--registrability--Japan
Subject: Trade mark distinctiveness--fashion and design industry
Subject: Luxury goods
SNIPER No.: 2013/02720
Author: Economides, Viki
Title: Tianrui Group Co. v. International Trade Commission: the dubious status of extraterritoriality
and the Domestic Industry Requirement of Section 337
Source: Intellectual Property Law Review. Vol. 45, 2013, pp. 747-764.
SNIPER Bulletin – March 2015
Page 52 of 60
General Note: Originally published in: American University Law Review. Vol. 61 No. 4, 2012, pp.
1235-1252.
Abstract: Elements of a trade secret claim and a cause of action under section 337 of the Tariff
ACT of 1930-- TianRui case -- facts of the case -- major holdings of the Federal Circuit -- critique of
the Federal Circuit?s reasoning -- argument that TianRui was incorrectly decided because it
contradicted Supreme Court precedent regarding extraterritoriality and compromised the domestic
industry requirement of a section 337 claim under the Tariff Act of 1930 -- asserts that the Federal
Court Federal Circuit inappropriately expanded its jurisdiction in TianRui for two main reasons -established presumption that U.S. laws do not apply extraterritorially should have prevented
jurisdiction because the conduct in this case occurred entirely outside of the United States -section 337 requires that the unfair act threaten to destroy or substantially injure an industry in the
United States -- the actions in TianRui cannot satisfy this requirement because there can be no
domestic industry where a United States inventor no longer employs the misappropriated process
in its production of widgets.
Subject: Trade secrets--case law--United States
SNIPER No.: 2014/01776
Author: Wilkof, Neil J.
Title: Trade marks and brands in the competitive landscape of the 3D printing ecosystem
Source: Trademark Reporter. Vol. 104 No. 3, May-June 2014, pp. 817-821.
Abstract: Use of trade marks and brands in 3D printing -- competitive advantage -- promotion of
dedicated 3D printing brands -- expiry of some 3D printing patents - technology in the public
domain -- importance of strong IP regimes -- examination of IBM's use of trade marks and brands
to gain a prominent place in the industry.
Subject: Three dimensional printing--United States
Subject: Computer-related inventions
SNIPER No.: 2015/00161
Author: Cran, David
Title: UK and Germany reach Patent Box agreement
Source: Intellectual Property Magazine. December 2014-January 2015, p. 16.
Abstract: Tax concessions on intellectual property -- if agreement accepted by OECD, it limits UK
Patent Box to situations where the R&D has taken place in the UK -- qualifying expenditure can be
increased by up to 30% -- phasing out of existing preferential IP regimes -- transition period until
June 2021 -- current UK Patent Box closes in June 2016.
Subject: Business Tax--United Kingdom
Subject: Patents--economics--United Kingdom
Subject: Patent systems--United Kingdom
SNIPER No.: 2014/00912
Author: Du, Shanshan
Author: Yang, Jianzhong
SNIPER Bulletin – March 2015
Page 53 of 60
Title: Understanding and application of Article 28 of Trademark law: comments on the case of
"YMB" trademark opposition reexamination
Source: China Patents and Trademarks. Vol. 115 No. 1, January 2014 pp. 106-108.
Abstract: Case of K Mikimoto & Co opposing the registration to the YMB mark -- determining
similarity of goods -- standards for determining the similarity of trade marks.
Subject: Trade mark registrability--China
Subject: Trade marks--case law
SNIPER No.: 2013/02945
Author: Gilson LaLonde, Anne
Author: Gilson, Jerome
Title: The United States supplemental register: solace, substance, or just extinct?
Source: Trademark Reporter. Vol. 103 No. 4, 2013, pp. 828-894.
Abstract: Ability of a US supplemental registration to block a principal registration -- registration of
terms that are descriptive, but do not have acquired distinctiveness -- generic terms and functional
matter cannot be registered on principal or supplemental registers -- definition of 'lawful use in
commerce' -- exclusive use requirement -- Lanham Act – original intent of the supplemental
register was to allow US companies to register their trade marks internationally -- assessment of
international law covering foreign registration -- use of the ® registration symbol -- supplemental
register protection for domain names -- Trademark Clearinghouse and gTLD registries -- examples
of supplemental registrations that have caused the USPTO to refuse registration to other marks -disadvantages of registering on the supplemental register -- abolishing the supplemental register.
Subject: Trade mark distinctiveness--United States
Subject: Trade mark registrability--United States
SNIPER No.: 2015/00036
Author: Pugatch, Meir Perez
Author: Chu, Rachel
Author: Torstensson, David, 1980Added author: Chamber of Commerce of the United States of America. Global Intellectual
Property Center
Title: UP unlimited potential: GIPC international IP index [electronic resource]
Source: GIPC International IP Index. 3rd ed., 2015.
General Note: 3rd edition
General Note: The report was prepared by the Pugatch Consilium for the U.S. Chamber of
Commerce's Global Intellectual Property Center
Abstract: GIPC Index as a statistical tool to help business and policy makers measure a country's
direction in moving towards innovative and creative economies -- maps the IP environment of 30
economies using 30 factors -- indicates IP environments that foster growth and development -- key
findings -- list of countries that took steps to improve their IP system in the last year -- Canada,
India, Indonesia, and parties to the Trans-Pacific Partnership (TPP), including Australia, Mexico
and Singapore -- countries that have room to further strengthen their IP laws -- Canada, countries
considering introducing plain packaging legislation (France, New Zealand, South Africa, Thailand
and the UK), Chile and Peru, Switzerland and the United States -- Australia ranked 7th overall out
of 30 nations
SNIPER Bulletin – March 2015
Page 54 of 60
Subject: Intellectual property--policy
Subject: Intellectual property rights
SNIPER No.: 2015/00017
Author: Macedo, Charles R.
Author: Jain, Reena
Author: Sebba, Michael
Title: US Supreme Court: no induced patent infringement without direct infringement
Source: Journal of Intellectual Property Law and Practice. Vol. 9 No. 12, December 2014, pp. 954956.
Abstract: Divided infringement -- US Supreme Court -- induced infringement under 35 USC 271(b)
-- petitions for certiorari -- no liability for inducing patent infringement when no direct infringement
occurs -- findings of Limelight Networks, Inc v Akamai Technologies, Inc and others, No 12 - 786,
572 US _ (2 June 2014)('Limelight')
Subject: Patent infringement--case law--United States
SNIPER No.: 2014/02187
Author: Ritter, Michael
Author: Tempesta, Jennifer
Author: Ragusa, Paul
Title: The wake of FTC v Actavis: practical implications on the pharmaceutical industry
Source: Pharmaceutical Patent Analyst. Vol. 3 No. 4, 2014, pp. 345-347.
Abstract: Reverse payments in patent litigation settlements in Abbreviated New Drug Application
(ANDA) cases -- decision of Supreme Court that reverse payment settlements can constitute a
violation of antitrust laws but each case must be considered under the rule-of-reason standard -disagreement on whether Actavis should be applied to non-monetary compensation settlements -Hatch-Waxman litigation.
Subject: Patent litigation--United States
Subject: Competition law
SNIPER No.: 2014/01681
Author: Zhang, Xiaodu
Title: Ways to examine prior art defence: comments on Yancheng Zetian Machinery Co., Ltd. v.
respondent Yangcheng City Gereite Machinery Co., Ltd.
Source: China Patents and Trademarks. Vol. 117 No. 2, April 2014, pp. 103-105.
Abstract: Infringements of utility model patents -- comparison between infringing technical solution
and the prior art -- case related to connection between an electromagnetic valve and connecting
piston.
Subject: Patent infringement--China
Subject: Patents--case law--China
SNIPER Bulletin – March 2015
Page 55 of 60
SNIPER No.: 2014/02191
Author: Kanz, Christine, 1971Author: Gerhardt, Florian
Title: What are the risks of second medical use and dosing regimens in pharmaceutical
patenting?
Source: Pharmaceutical Patent Analyst. Vol. 3 No. 4, 2014, pp. 481-484.
Abstract: Due to increasing development costs, pharmaceutical companies have been exploring
second uses of compounds already known in the art -- prerequisites to patent second medical use
claims varies between jurisdictions -- case law clarified scope of patent infringing customised
formulation of drugs covered by second medical use claims -- scope of protection for second
medical use patents may vary depending on the category -- explanation of infringement of second
medical use claims in German law -- patent infringement by doctors -- purpose limited compound
claims.
Subject: Swiss-type claims--pharmaceutical industry--Germany
Subject: Swiss-type claims--case law
Subject: Patent owners' rights
SNIPER No.: 2014/01774
Author: Gallagher, Michelle
Title: Who owns blue?: an examination of the functionality doctrine in university sports color
Source: Trademark Reporter. Vol. 104 No. 3, May-June 2014, pp. 765-810.
Abstract: Protecting a colour as an intellectual property right -- acquired distinctiveness by
consumer recognition -- Lanham Act, section 2(e)(5) -- non traditional marks -- legitimate
competition -- In re Morton-Norwich Products Inc. -- utilitarian or aesthetic functionality -- Inwood
Laboratories, Inc., v., Ives Laboratories, Inc. -- colour depletion theory -- competitive need -importance of Qualitex Co. v. Jacobson Products Co., Inc. -- Christian Louboutin S.A. v. Yves St.
Laurent America Holding, Inc -- threefold test for aesthetic functionality -- precedent of In re
Florists' Transworld Delivery, Inc. (FTD) -- case studies -- protection of colour in sports -- restriction
of a trade mark claim -- Boise State University trade mark registration of the colour blue -competitive need -- trade mark licensing.
Subject: Colour marks--United States
Subject: Trade mark registrability--United States
Subject: Trade dress--United States
SNIPER No.: 2015/00168
Author: Savvides, Theo
Author: Pollard, Briony
Title: Who's your daddy?
Source: Intellectual Property Magazine. December 2014-January 2015, pp.27-28 .
Abstract: New regulations concerning use of orphan works -- exemption from copyright
infringement for some organisations that make orphan works available for non-commercial
purposes -- digitisation of orphan works -- licences for orphan works limited to use in the UK -concept of diligent search for parents of the orphan work -- effectiveness of the new regulations.
Subject: Orphan works--law and legislation--United Kingdom
SNIPER Bulletin – March 2015
Page 56 of 60
SNIPER No.: 2015/00050
Author: World Intellectual Property Organization. Economics and Statistics Division
Title: WIPO IP facts and figures 2013 [electronic resource]
Source: WIPO IP Facts and Figures. 2013 edition, June 2014.
General Note: Third report in a series.
Abstract: Overview of international intellectual property activity 2013 -- global IP applications and
active IP rights -- patents and utility models -- trade marks -- industrial designs -- IP applications by
office -- PCT, Madrid and Hague registrations 2012.
Subject: Patent Co-operation Treaty (1970 June 19)--statistics
Subject: Madrid Agreement Concerning the International Registration of Marks (1891 April 14).
Protocols, etc., 1989 June 27--statistics
Subject: Hague Agreement Concerning the International Registration of Industrial Designs (1999
July 2)--statistics
Subject: Intellectual property--statistics
Subject: Patents--statistics
Subject: Minor patents--statistics
Subject: Trade marks--statistics
Subject: Industrial designs--statistics
SNIPER No.: 2014/01643
Author: Nie, Kevin
Title: Xi Xiaoming: the "wind vane" of IP judicial protection
Source: China Intellectual Property: comprehensive IP report on China. Vol. 59 No. 1-2, JanuaryFebruary 2014, pp. 30-31.
Abstract: Tencent v 360 QQ Guard -- case unusual because the Vice President of the Supreme
People's Court acted as the presiding judge -- policy direction of the IP judicial court is to
strengthen IP protection -- increase in damage compensation -- reduce burden of proof - use of
temporary injunction system.
Subject: Intellectual property systems--China
Subject: Intellectual property education--China
SNIPER Bulletin – March 2015
Page 57 of 60
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Published by: IP Australia
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