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SNIPER
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October 2013
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SNIPER Bulletin
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SNIPER No.: 2012/00976
Added author: IP Australia
Title: Administrative amendments to the World Intellectual Property Organization
(WIPO) administered treaties: public consultation paper
Source: Administrative Amendments to the World Intellectual Property Organization
(WIPO) Administered Treaties: Public Consultation Paper. 2007
Summary: Australian Government considering formally accepting amendments
designed to streamline the administration of several World Intellectual Property
Organization (WIPO) treaties -- WIPO Convention; Paris Convention; Berne
Convention; Nice Agreement; PCT; Strasbourg Agreement; Budapest Agreement -amendments did not impact on IP rights -- prior to the Government making a decision,
IP Australia undertook consultation process -- provide input to a National Interest
Analysis -- consultation paper published 22 May 2007 -- comments invited on proposals
by 30 June 2007
Subject: World Intellectual Property Organization--treaties
Subject: Intellectual property--treaties--Australia
SNIPER No.: 2013/00788
Author: Misra, Tanvi
Title: All the world's a stage
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 1, December 2012January 2013, pp. 31-32.
Summary: India's new Copyright (Amendment) Act 2012 -- new opportunities for the
Indian creative community to protect their work -- rights of the authors of underlying
works -- clarification on the independent existence of author's rights -- author's right to
claim royalties -- author's right to retain exploitation by future technologies -- broadening
of performers rights -- extending the definition of 'performer' -- streamlining provisions
dealing with violation of performer's rights -- amendment to the definition of
'communication to the public'
Subject: Copyright--law and legislation--India
Subject: Copyright--culture and entertainment industry--India
SNIPER No.: 2013/01461
Author: Rosati, Eleonora
Title: Amazon's use of term 'appstore' is not deceptive
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 7 July, 2013, pp.
511-512.
Summary: Apple Inc v Amazon.com Inc, US District Court for the Northern District of
California, No C 11-1327 PJH (N D Cal, 2 January 2013) -- US District Court rejected
Apple's claim that Amazon's use of the term 'app-store' in relation to its sale of
applications ('apps') for Android services and the Kindle Fire (Amazon's tablet
computer) was false advertising -- trade mark infringement, false designation of origin,
false description, false advertising, dilution -- however Apple had failed to demonstrate
that consumers either understood the term 'appstore' as including specific qualities or
characteristics or attributes of Apple App Store, or were misled by Amazon's use of this
term -- decision yet to be decided.
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Subject: Trade mark distinctiveness--case law--United States
Subject: Trade mark opposition--United States
Subject: Famous trade marks--United States
SNIPER No.: 2012/01571
Author: Musungu, Sisule F.
Added author: International Centre for Trade and Sustainable Development
Added author: ICTSD Programme on IPRs and Sustainable Development
Added author: Catholic Agency for Overseas Development
Title: An analysis of the EC non-paper on the objectives and possible elements of an
IP section in the EC-Pacific EPA
Source: Analysis of the EC Non-Paper on the Objectives and Possible Elements of an
IP Section in the EC-Pacific EPA. 2007.
General Note: A study commissioned by the Catholic Agency for Overseas
Development (CAFOD) and Co-sponsored by the International Centre for Trade and
Sustainable Development (ICTSD).
Summary: A set of objectives and possible elements for an intellectual property section
of the proposed Economic Partnership Agreement (EPA) between the European
Communities (EC) and the Pacific countries -- concludes that the EC's interpretation of
Article 46 of the Cotonou Agreement is not only over-ambitious but largely incorrect -- is
submitted that to give effect to Article 46 of the Cotonou Agreement does not require
substantive IP rules in the EC-Pacific EPA or the EPAs in other regions -- general
provisions on whether and how those Pacific countries that are not WTO Members
would adhere to the TRIPS Agreement in terms of Article 46.2 of the Cotonou
Agreement would suffice -- there is no other mandatory requirement under Article 46 of
Cotonou -- recommends that Pacific countries do not agree to the inclusion of an IP
section in the EC-Pacific EPA.
Subject: Free trade--Pacific Area
Subject: Economic development--policy
SNIPER No.: 2013/02123
Author: Adams, Kathryn, 1963Added author: Australian Centre for Intellectual Property in Agriculture
Added author: Horticulture Australia
Title: Applying for intellectual property rights for plant innovations in Australia and
overseas: handbook
Source: Applying for Intellectual Property Rights for Plant Innovations in Australia and
Overseas: Handbook. 2009.
General Note: First edition, Feedback Version.
General Note: "This booklet was prepared independently by the Australian Centre for
Intellectual Property in Agriculture with funding from Horticulture Australia Limited
(Project HG07052 'The Potential Impact of Patents on Australian Horticulture' 20072009)". Publication number: HAL/ACIPA 16/09
Summary: Plant breeder's rights -- summaries of key elements of the systems in
Australia and 13 other member countries of the International Convention for the
Protection of New Varieties of Plants (UPOV) -- Argentina, Brazil, Canada, Chile,
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European Community, Germany, Japan, Netherlands, New Zealand, South Africa,
Switzerland, United Kingdom, United States -- country comparison -- key
recommendations for applicants -- contact the relevant authority before making an
application -- if planning to apply for protection in more than one country for the same
variety, contact the relevant authorities in each country (or the European Community) to
ensure understanding of the time limits applicable for the second and subsequent
applications -- be particularly wary of all time limits, including for prior sale, making
objections and lodging applications -- note differences in terminology between different
countries -- note the different systems in the USA used to protect sexually (and tuber)
reproduced plants and asexually reproduced plants
Subject: Plant breeder's rights--Australia
Subject: International plant rights
SNIPER No.: 2013/02165
Author: Tew, Rebecca
Title: Are the indications good?
Source: World Trademark Review. No. 45, October-November 2013, pp. 58-61.
Summary: Recent UK Intellectual Property Office (UKIPO) decision -- drawn attention
to the suitability of geographical indications as trade marks -- Chanel Limited filed an
application to register 'Jersey' as the name for a new fragrance -- application attracted
the attention of the Channel Island -- formally opposed by the Minister for Economic
Development of the States of Jersey -- legal position -- geographical indications -protected designation of origin (PDO) -- traditional speciality guarantee (TSG) -increase in applications for geographical indications.
Subject: Geographical indicators--case law--United Kingdom
Subject: Geographical indicators--law and legislation--Europe
SNIPER No.: 2013/02078
Author: Clevy, Sébastien
Title: Bad faith rescues the Man of Steel: Federal Court refuses trade mark registration
of "superman workout" under s 62A
Source: Australian Intellectual Property Law Bulletin. Vol. 26 No. 3, September 2013,
pp. 69-75.
Summary: Few decisions of the Trade Marks Office and the Australian courts in
relation to the interpretation of s 62A -- positive determination of bad faith by the Federal
Court -- DC Comics v Cheqout Pty Ltd -- "superman workout" word mark in relation to
various fitness and health club services -- registration found to be in bad faith -reputation and deception or confusion -- decision provides judicial insight and guidance
on the breadth of the concept of bad faith.
Subject: Trade mark registration--case law--Australia
Subject: Trade mark entitlement
Subject: Trade mark ownership
Subject: Trade mark litigation--Australia
Subject: Famous trade marks
SNIPER No.: 2013/02188
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Author: Bammel, Jens
Title: Beyond Marrakesh
Source: WIPO Magazine. No. 4, August 2013, pp. 7-10.
Summary: World Blind Union (WBU) -- Marrakesh Treaty -- treaty creates the real
prospect that many thousands of copies of works in accessible formats currently held in
special libraries in different countries can be exchanged -- three-step test explained -broader review of accessibility policies -- WIPO's stakeholders' platform for visually
impaired persons -- TIGAR (Trusted Intermediaries Global Accessible Resources)
project -- enabling technologies framework (ETF) -- DAISY Consortium and the
EDItEUR Consortium -- capacity building.
Subject: World Intellectual Property Organization
Subject: Copyright--treaties
Subject: Fair use (Copyright)
SNIPER No.: 2013/02066
Author: Angelopoulos, Christina J.
Title: Beyond safe harbours: harmonising substantive intermediary liability for copyright
infringement in Europe
Source: Intellectual Property Quarterly. No. 3, 2013, pp. 253-274.
Summary: E-Commerce Directive's safe harbour regime -- provides a veneer of
approximation between the divergent laws of the Member States on the question of
intermediary liability for online copyright infringement -- Directive does not harmonise
the underlying substantive liability norms -- ample room for national divergences
between the laws of the various Member States -- applicable regimes currently in place
in jurisdictions of the UK, France and Germany -- commonalities and divergences -revealing the confusion that governs the topic across European borders -- structures in
place that could allow for the eventual European harmonisation of the substantive
issues.
Subject: Electronic commerce--Europe
Subject: Copyright infringement--liability--Europe
Subject: Carriage service providers--liability--Europe
SNIPER No.: 2013/02068
Author: Tvedt, Morten Walløe
Title: Bioprospecting in the high seas: regulatory options for benefit sharing
Source: Journal of World Intellectual Property. Vol. 16 No. 3-4, July 2013, pp. 150-167.
Summary: Legal regime for the marine areas beyond national jurisdiction might be
changing -- whether and how future international law should incorporate the issue of
sharing the benefits that arise from utilizing marine genetic resources (MGRs) -regulatory options for addressing the activity of bio-prospecting in the high seas -activity of bio-prospecting will likely give rise to a wide range of legislative alternative
forms of benefit sharing -- important practical implications and unresolved legal and
practical questions for owners of sampled material and for third-party users.
Subject: Bioprospecting
Subject: Benefit sharing
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SNIPER No.: 2013/00794
Author: Salhotra, Anuradha
Title: Biosimilars: a boom market in the making
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 1, December 2012January 2013, p. 47.
Summary: Biologics --biopharmaceutical drugs obtained from a living system or
genetically modified organism -- biosimilars -- also called follow-on biologics or similar
biologics -- new versions of the patented biologics -- biosimilar can only launched in the
market after the patent on the reference biologic expires -- regulatory process for
biosimilars in India has been on a case by case basis -- new guidelines designed to
create a pathway for local and international companies to invest in biosimilar
development in India -- 'Guidelines on Similar Biologics: Regulatory Requirements for
Marketing Authorization in India' -- detailed requirements for quality, preclinical studies
and clinical trials for similar biologics - -worldwide approval of similar biologics may be
hastened if approval sought in India first -- same data package and long-term
pharmacovigilance data and post-marketing studies can be used as the basis of
approval in other jurisdictions -- improve likelihood of worldwide approval -- prospects
for boom in biosimilar industry in India
Subject: Pharmaceuticals--India
Subject: Pharmaceutical industry--India
SNIPER No.: 2013/02146
Author: Kailasanath, Vinita
Title: Bowman v Monsanto: unanimous narrow ruling leaves open questions with
respect to other self-replicating technology and the conditional sale doctrine
Source: Bio-Science Law Review. Vol. 13 No. 2, 2013, pp. 74-78.
Summary: Patent infringement -- Bowman's activities replanting Monsanto RoundUp
Ready soy beans -- litigation -- Supreme Court's unanimous opinion -- implications -Court did not address whether or how the doctrine of patent exhaustion would apply
when the article's self-replication occurs outside the purchaser's control -- when selfreplication is a necessary but incidental step in using the item for another purpose -Court also left for another day more specific guidance with respect to self-replicating
biotechnology -- Court did not address "conditional sale" doctrine -- Supreme Court's
narrow opinion unequivocally held that the doctrine of patent exhaustion does not permit
a farmer to reproduce patented seeds through planting and harvesting without the
patent holder's permission.
Subject: Patent infringement--case law--United States
Subject: Genetic engineering--agriculture industry
Subject: Patent exhaustion
SNIPER No.: 2013/02047
Author: Blum, Jeremy
Title: British courts consider the own name defence: again
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 9, September
2013, pp. 678-679.
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Summary: Two recent trade mark infringement actions using the 'own name' defence
with different outcomes -- Redd Solicitors LLP v Red Legal Ltd & Another -- Stichting
BDO & Others v BDO Unibank & Others -- the 'own name' defence under Article 12(a)
of the Community Trade Mark Regulation -- Community trade mark 'REDD' -Community trade mark 'BDO' -- guidance in Hotel Cipriani v Cipriani -- decision
ultimately based on 'is the use in accordance with honest practices' -- Red Legal not
entitled to rely on an Article 12(a) defence but in the other action BDO Unibank had a
full defence under the Article -- significance of decision and the future of the 'own name'
defence.
Subject: Commercial names--case law--United Kingdom
Subject: Trade mark infringement--case law--United Kingdom
SNIPER No.: 2013/01882
Author: Kök, Idil Buse
Title: The burden of proof online
Source: World Intellectual Property Review. May-June 2013, pp. 58-61.
Summary: Function of a trade mark -- fulfilled through use -- 'use of a mark on the
Internet' has become a significant component of trade mark law -- whether use on the
internet can be sufficient to prove genuine use of a mark -- World Intellectual Property
Organization (WIPO) and the Assembly of the Paris Convention -- adopted a Joint
Recommendation concerning Provisions on the Protection of Marks and Other Industrial
Property Rights in Signs on the Internet -- provisions of this recommendation aim to
provide a clear legal framework for trade mark owners who wish to use their marks on
the Internet -- participate in the development of electronic commerce -- proof of use -legal practices in France, United Kingdom, United States, Turkey.
Subject: Trade mark use
Subject: Internet
SNIPER No.: 2013/01907
Author: Chen, Crystal J.
Title: Can similarity between words and devices exist?
Source: World Intellectual Property Review. May-June 2013, p. 104.
Summary: Taiwan Intellectual Property Court -- decision on an administrative litigation
case involving a trade mark dispute over 'frogs laying eggs' -- based the conclusion of
similarity between two marks merely on the connotation of two marks -- identical
business scope and competitive relationship between Wu and Wang -- IP court found in
favour of Wang -- the IP court's opinion -- Wu's word mark was revoked.
Subject: Trade mark litigation--Taiwan
Subject: Trade mark use--Taiwan
SNIPER No.: 2013/02138
Author: Rowden, Cynthia
Title: Canada's new Combatting Counterfeit Products Act
Source: Managing Intellectual Property. No. 232, September 2013, pp. 58-60.
Summary: Proposed legislation addressing counterfeiting remedies -- aims to bring
Canadian border controls into line with those of other countries -- legislation will amend
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the Copyright Act and the Trade-marks Act to enhance the current remedies for dealing
with counterfeit products -- making the sale of known counterfeits actionable -- provide a
format for requesting Customs assistance and permitting temporary seizure of
merchandise -- opportunity to register a wider range of marks -- simplify the registration
process -- civil remedies for counterfeiting -- Bill C-56 Combating Counterfeit Products
Act -- other changes in the Bill -- next steps.
Subject: Counterfeiting--law and legislation--Canada
Subject: Damages--Canada
SNIPER No.: 2013/02007
Author: Vleeschauwer, Marc de
Title: The Canadian Patent Examiner Qualification Program
Source: World Patent Information. Vol. 35 No. 3, September 2013, pp. 224-229.
Summary: Number of patent examiners working at the Canadian Intellectual Property
Office (CIPO) increased by more than three-times from 2001 to 2011 -- need to
efficiently and uniformly train this large influx of new employees -- the Patent Examiner
Qualification Program was developed and implemented in 2003 -- improved upon during
the last ten years -- summary of the two-year training program -- combines classroom
training with on-the-job training -- trainees work on patent applications while being
coached by a senior patent examiner -- trainees who meet all the requirements by the
end of the second year are promoted to the working level -- CIPO's experience may be
useful for other IP offices to develop their own training programs.
Subject: Canadian Intellectual Property Office
Subject: Patent examination--Canada
Subject: Intellectual property offices staff--Canada
SNIPER No.: 2013/02004
Author: Nikzad, Rashid
Title: Canadian patent profile: some explanations in patent statistics
Source: World Patent Information. Vol. 35 No. 3, September 2013, pp. 201-208.
Summary: Use of patents in Canada and by Canadian inventors -- patents as a
measure of innovation -- different measures of patent statistics used to compare
Canada's profile other countries -- comparison of innovation performance of government
and universities of selected countries using patent statistics -- patent intensity of
technologies and industries -- comparison suggests Canadian companies do not use
patents as much as their counterparts in other industrialized countries -- surveys of
Canadian innovative companies indicate that IP protection in Canada is not an obstacle
to innovation.
Subject: Patent applications--trends--Canada
Subject: Innovation (Technological)--Canada
SNIPER No.: 2013/00791
Author: Glass, Gregory
Title: Changing tradition
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 1, December 2012January 2013, pp. 37-44.
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Summary: Approach to patent litigation in Japan changing -- big Japanese companies
more willing to litigate if necessary -- number of infringement cases increasing in the IP
high Court -- Court has become more patentee friendly -- changes to IP High Court is
part of a larger effort by the Japanese government to make the legal system a better
place for IP right holders to protect their IP -- Japanese government's pro-patent policies
-- growth in legal practice -- improvements in legal education -- government's target to
increase the number of legal professionals -- increasing use of in-house counsel -lawyers and patent attorneys at domestic law firms noticing shift in the way clients
protect their IP -- fewer filings in Japan and more in other countries, such as the US and
China -- criticism of the judicial reform process -- concerns about too many new lawyers
-- need lawyers with expertise in English language and foreign laws -- patent and trade
mark enforcement actions still difficult in Japan -- not a significant market in fake
merchandise.
Subject: Patent litigation--Japan
Subject: Legal procedure--Japan
Subject: Lawyers--intellectual property industry--Japan
SNIPER No.: 2013/02131
Author: Ding, Xianjie
Title: China's IP strategy: the domestic perspective
Source: Managing Intellectual Property. No. 232, September 2013, pp. 29-30.
Summary: China's National Intellectual property (IP) Strategy -- playing important role
in promoting real progress in the country's IP environment -- concerns about the Plan's
focus on patent filing numbers -- real improvements stemming from the policies -Chinese companies have been able to take advantage of the patent filing subsidies to
protect innovative technologies -- courts have provided guidance on legal interpretation
to help strengthen IP protection -- public awareness of the importance of IP has risen
considerably.
Subject: Intellectual property systems--China
Subject: Intellectual property awareness--China
SNIPER No.: 2013/02130
Author: Pattloch, Thomas, 1971Title: China's IP strategy: the international perspective
Source: Managing Intellectual Property. No. 232, September 2013, pp. 26-28.
Summary: National Intellectual property (IP) Strategy -- major force in changing the IP
environment in China -- increases in patent and trade mark filings -- the Strategy has
made intellectual property a central concern for all levels of government -- has led to
marked improvement in IP enforcement -- question remains whether these gains are
sustainable with less government support -- if China will take the necessary next steps.
Subject: Intellectual property systems--China
Subject: Intellectual property rights--China
SNIPER No.: 2013/01990
Author: Instone, Alicia
Title: Cigarette plain packaging
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Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of
Patent Agents. Vol. 42 No. 7, July 2013, pp. 387-388.
Summary: Proposed erosion of rights of brand owners -- doubt it will have the desired
effect on smokers -- believes none of the measures regarding the restriction of trade
mark use and branding that have been or are planned to be introduced would have any
impact on smokers -- further entrench brand of choice instead -- much more effective
measures that could be introduced without setting dangerous precedents eroding trade
marks -- impact on brands.
Subject: Australia. Tobacco Plain Packaging Act (2012)
Subject: Trade dress--Australia
Subject: Brand management
Subject: Trade mark owners' rights--Australia
SNIPER No.: 2013/02144
Author: O'Sullivan, Nina
Title: CJEU reference on meaning of 'human' embryos': does it include parthenotes?:
International Stem Cell Corporation v Comptroller General of Patents
Source: Bio-Science Law Review. Vol. 13 No. 2, 2013, pp. 68-70.
Summary: Court of Justice of the European Union (CJEU) sought clarification as to the
meaning of the term 'human embryo' on Article 6 (2)(c) of the Biotech Directive -- what
is meant in Brüstle by the expression 'capable of commencing the process of
development of a human being -- test not only to parthenotes but also to fertilised ova,
non-fertilised ova subjected to somatic-cell nuclear transfer and stem cells obtained
from human blastocysts -- CJEU judgment awaited with keen interest.
Subject: Patenting of life forms--Europe
Subject: Patentability--biotechnology industry--Europe
Subject: Biotechnology--patentability--Europe
SNIPER No.: 2013/01952
Author: Kirova, Binka
Title: The code: the Da Vinci code, TM code, QR code...
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 8, August 2013,
pp. 599-602.
Summary: Trade mark registrability of signs, symbols and codes and in particular the
possibility that QR (Quick Response) codes could be registered as trade marks -- the
Da Vinci code and encoded messages in trade marks -- trade marks containing
ambigrams -- encoded signs and symbols in trade marks -- refusal to register trade
marks because of their religious symbolism -- 'QR Code' registered as word Community
trade mark -- danger of becoming a descriptive or generic term -- Article 4 of the CTM
Regulation -- QR Code can be protected as a trade mark as long as they appear in
combination with other colours, letters, numerals or graphic elements which allow them
to be distinctive.
Subject: Trade marks--trends
Subject: Trade mark registrability
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SNIPER No.: 2013/02082
Author: Australia. Advisory Council on Intellectual Property.
Title: Collaborations between the public and private sectors: the role of intellectual
property
Source: Collaborations Between the Public and Private Sectors: the Role of Intellectual
Property. 2012-2013.
Summary: Concerns raised about the low level of collaborations between business,
universities and other publicly-funded research organizations (PFROs) -- Government
responded in June 2010 by asking ACIP to conduct a review these collaborations -ACIP specifically looked at the role of IP and how it acts as an enabler or disabler -report identifies important factors that affect the formation and operation of
collaborations -- includes recommendations on how these can be improved -- ACIP
consulted with industry, universities, public research agencies, representatives of the
Government and other relevant organizations and research bodies in preparing its
report -- the report is dated September 2012 and was released on 8 November 2012 -Government response to be released mid-2013
Subject: Technology transfer--Australia
Subject: Science and research industry--Australia
SNIPER No.: 2013/01602
Author: Wood, Ian
Title: Colour marks: a purple decision clears the way forward
Source: European Intellectual Property Review. Vol. 35 No. 5, 2013, pp. 300-304.
Summary: Registration of colour marks -- can the appearance of required product
information and brand names on a wrapper, affect a claim for a colour covering the
whole visible surface of the packaging -- Nestlé v Cadbury -- numerous grounds on
which Nestle opposed the colour application -- evidence of use -- decisions rejecting the
opposition -- requirements for graphical representation -- use of the colour purple by
other undertakings.
Subject: Colour marks--case law--United Kingdom
Subject: Colour marks--registrability
Subject: Trade mark distinctiveness
SNIPER No.: 2013/02079
Author: Heindl, Sabiene
Title: Colourful marks: a brief update on the role of colour in trade mark disputes
Source: Australian Intellectual Property Law Bulletin. Vol. 26 No. 3, September 2013,
pp. 76-77.
Summary: Specsavers International Healthcare Ltd v Asda Stores Ltd -- trade mark
infringement and passing off -- use of colour in a mark by brand owners when registered
mark is in black and white -- application in Australia -- broad protection and cost savings
Subject: Colour marks
Subject: Trade mark registration
Subject: Trade mark infringement--case law
Subject: Brand management
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SNIPER No.: 2013/02127
Added author: Australian Centre for Intellectual Property in Agriculture
Added author: Horticulture Australia
Title: Commercialisation and adoption of horticultural research: workshop materials
Source: Commercialisation and Adoption of Horticultural Research: Workshop
Materials. 2008.
General Note: "This manual has been prepared for a series of Workshops on
'Commercialisation and Adoption Planning' for researchers and others in horticulture
industries. The workshops are conducted as part of the Horticulture Australia Limited
(HAL) Project HG07051 by the Australian Centre for Intellectual Property in Agriculture
(ACIPA) Publication number: HAL/ACIPA 011/08
Summary: Commercialisation of intellectual property -- ownership -- overlapping
ownership -- special position of academics -- VUT v Wilson -- UWA v Gray -- contracts - terms of contracts -- ending a contracts -- contracts and IP legislation -- examples of
contracts in the agriculture context -- branding -- investor requirements -commercialisation and adoption planning -- planning checklist -- case study.
Subject: Plant breeder's rights--Australia
Subject: Intellectual property education--agriculture industry--Australia
Subject: Intellectual property management--agriculture industry--Australia
SNIPER No.: 2013/01950
Author: Curry, Josephine
Title: 'Communication to the public' and online retransmission of programmes
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 8, August 2013,
pp. 594-596.
Summary: The Court of Justice of the European Union (CJEU) ruled that authorization
is required for online retransmission of broadcasts even when subscribers are legally
permitted to view the original transmission -- ITV Broadcasting Ltd and others v TV
Catchup Ltd (TVC) -- Article 3(1) of Directive 2001/29 -- 'live' streams of free-to-air
television broadcasts -- alleged breach of s 20 of the Copyright, Designs and Patents
Act 1988 and Article 3(1) of the Copyright Directive -- meaning of 'communication' -meaning of 'public' -- FAPL, Airfield and SGAE cases -- relevance of advertising -decision to go back to the High Court to be applied.
Subject: Copyright infringement--case law--United Kingdom
Subject: Neighbouring rights--case law--United Kingdom
Subject: Television broadcasts--United Kingdom
SNIPER No.: 2013/01467
Author: Li, Xiang
Title: A comparative analysis of the inventive step standard in the EPO, SIPO and
USPTO
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 7, July 2013, pp.
539-545.
Summary: Comparative analysis of inventive step assessment -- law applied in three
offices -- United States Patent and Trademark Office (USPTO) -- European Patent
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Office (EPO) -- Chinese Intellectual Property Office (SIPO) -- scope and content of the
prior art -- determining the differences between the claimed invention and the prior art -level of person skilled in the art -- important factors in assessing the inventive step -differences remain between the definition of prior art and the scope of prior art available
for determining non-obviousness among the three offices -- these differences are not
fundamentally significant in the vast majority of cases -- methodologies employed in
their obviousness or inventive step determination shows that the determinations are
basically the same.
Subject: United States. Patent and Trademark Office
Subject: European Patent Office
Subject: China. Guo jia zhi shi chan quan ju
Subject: Inventive step
Subject: Intellectual property industry
SNIPER No.: 2013/02033
Author: Esteve Pardo, Ma. Asunción (María Asunción)
Title: Compensation for private copying in Europe: recent developments in France,
Germany and Spain
Source: European Intellectual Property Review. Vol. 35 No. 8, 2013, pp. 463-471.
Summary: Making private copies -- latest developments of the regulation of the private
copying compensation system in France, Germany and Spain -- different scope of the
private copying exception provided by the national legislation in these three countries -established compensation system -- legal nature of fair compensation -- impact of the
CJEU Padawan decision -- methods and criteria for setting levies -- creditors and
debtors of the levy -- EU harmonisation of the private copying exception.
Subject: Damages--law and legislation--Europe
Subject: Copyright levies--Europe
Subject: Fair use (Copyright)--Europe
SNIPER No.: 2013/01902
Author: Delion, Alain C.
Title: Confusion over appellations of origin
Source: World Intellectual Property Review. May-June 2013, p. 99.
Summary: Definition of an appellation of origin -- geographical indication -impediments to legal protection -- protection cannot be granted to any appellation of
origin which is confused with any brand which has been registered in good faith -'Navarra' for wines and spirits -- opposed by a supposedly similar mark that included the
name 'Navarro' -- consumers could be confused about the entrepreneurial origin of the
products -- Peruvian patent and trademark office (INDECOPI) proceeded to evaluate
the possible risk of confusion -- found that there was no likelihood of confusion between
them.
Subject: Confusing similarity--case law--Peru
Subject: Geographical indicators--Peru
SNIPER No.: 2013/00787
Author: Chan, Johnny
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IP Australia Library
Title: Copyright conundrums
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 1, December 2012January 2013, pp. 17-30.
Summary: Copyright interpreted differently in each jurisdiction -- discussion with
lawyers from Australia, China, Hong Kong, India, Indonesia, Japan, Malaysia, New
Zealand, Pakistan, The Philippines, Singapore, South Korea, Sri Lanka, Taiwan,
Thailand -- comparison of copyright laws -- identify some common laws -- challenges
against online piracy
Subject: Copyright--Asia
Subject: Fair use (Copyright)--Asia
SNIPER No.: 2013/02064
Author: Griffin, James (James G. H.)
Title: Copyright evolution: creation, regulation, and the decline of substantively rational
copyright law
Source: Intellectual Property Quarterly. No. 3, 2013, pp. 234-252.
Summary: Copyright regulation is expanding -- more uses being regulated than before
-- copyright regulation now directly influences more people -- economic reasoning is
becoming increasingly predominant -- this challenges the perceived rationality of
copyright law -- potential to challenge the regulatory authority of copyright laws -- stages
in the development of copyright -- encouraging the creation of copyright works -regulate the exploitation of those works -- these two stages are based on substantive
rationality -- the third stage is to encourage as economically efficient exploitation as is
possible -- this stage is based on formal rationality -- public's perceived lack of
rationality of copyright today may be linked to the rise of less inclusive formalist
economic rationalisation -- inevitable decline of substantive rationality in copyright? -- if
substantive copyright were to align with formalist economic principles then perhaps
substantive rationality will survive.
Subject: Copyright
Subject: Economics
SNIPER No.: 2013/02105
Author: Hunter, Dan, 1966Title: Copyright in computer languages after Powerflex
Source: Intellectual Property Forum. No. 30, August 1997, pp. 18-24.
Summary: Full Federal Court of Australia decision -- Powerflex v Data Access -computer languages are not copyright in Australia -- overturned in the first instance,
decision of Jenkins J -- entrenches the dominant position of overseas copyright holders
in the Australian industry.
Subject: Copyright--case law--Australia
Subject: Computer-related inventions--case law--Australia
SNIPER No.: 2013/02161
Author: Giay, Gustavo
Title: Creating a robust anti-counterfeiting strategy for Latin America
Source: World Trademark Review. No. 45, October-November 2013, pp. 43-45.
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Summary: Protection of intellectual property (IP) rights in Latin America is a major
challenge -- main issue is
lack of enforcement -- current trends -- possibility to record trade marks with Customs -possible to stop goods in transit in the region -- the role of free trade zones -- lack of
clear regulations and assertive IP enforcement in free trade zones -- key considerations
in an anti-counterfeiting programme -- legal system -- political, economic and social
environment -- client's needs and expectations -- infringer's characteristics and modus
operandi.
Subject: Counterfeiting--law and legislation--Latin America
Subject: Intellectual property enforcement--Latin America
SNIPER No.: 2013/02090
Author: Naghavi, Alireza
Added author: Fondazione Eni Enrico Mattei
Title: Cross-border intellectual property rights: contract enforcement absorptive
capacity
Source: FEEM Nota di Lavoro, no.21. 2012.
Summary: Cross-border intellectual property rights -- North-South contract using a
Nash bargaining approach -- distinguishes between the outcome and its actual
enforcement -- absorptive capacity of the Southern country to exploit technology
transfer -- TRIPS and post-treaty enforcement -- looser IP protection in less advanced
countries bring about an improvement in global efficiency -- "special 301" unilateral
actions by the U.S.
Subject: Technology transfer
Subject: Intellectual property licensing
Subject: Intellectual property rights--policy
Subject: International trade
SNIPER No.: 2013/02101
Author: McGowan, Glenn
Title: Current developments: Australia
Source: Intellectual Property Forum. No. 29, May 1997, pp. 34-39.
Summary: Federal Court docket system trialled in Melbourne -- petty patents to be
replaced with "Innovation Patent System" -- Griffin v Isaacs (1938) 12 ALJ 169 -exploitation of inventions by the Crown -- Stacks v Brisbane City Council (1995) 121
ALR 333 -- infringing a pirate work under the Copyright Act -- A-One Accessory Imports
Pty Ltd v Off Road Imports Pty Ltd (1996) AIPC 91-222 -- assignor estopped from
impeaching validity of a patent -- Steel Foundations v Instant Foundations -- aboriginal
flag case -- Harold Joseph Thomas v David George Brown and James Morrison Valley
Tennant No. SG62 of 1996 FED No. 215/97 (Federal Court of South Australia District
Registry)-- new intellectual property rules in the Supreme Court of Victoria -- Re Sanyo
Electric Co Ltd and Commissioner of Patents (1996) 36 IPR 470.
Subject: Patent litigation--case law--Australia
Subject: Trade mark litigation--case law--Australia
SNIPER No.: 2013/02107
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SNIPER Bulletin
IP Australia Library
Author: Savage, Tracey
Title: Current developments: Australia
Source: Intellectual Property Forum. No. 30, August 1997, pp. 37-43.
Summary: Update on Australian Intellectual Property Organisation (AIPO) practice -Trade Marks -- extensions of time s224 -- applications claiming priority -- claim for
convention priority based on community Trade Mark applications -- extensions of time in
opposition proceedings -- Patents -- extensions of time under s223 and the 'grace
period' for paying renewal fees -- Copyright Amendment Bill: parallel importation
restrictions to be eased -- sound tracks and sound recordings -- EMI Music Australia Pty
Ltd & ors v Phonographic Performance Company of Australia Ltd & Federation of
Australian Commercial Television Stations -- copyright knowledge and additional
damages -- "The Docket System" -- judicial review of seizure of copyright material -Classic Boots Australia Pty Ltd v Chief Executive Officer of Customs -- Victorian
Supreme Court moves to streamlined management of civil cases -- Monaco Willows Pty
Ltd v Greenbax Pty Ltd (1996) 36 IPR 387 -- Australian Competition and Consumer
Commission v Nationwide News Pty Ltd (1996) 36 IPR 75 -- Telstra Corporation v
Optus Communications (1996) 36 IPR 515 -- Caterpillar Inc & Anor v Sun Forward Pty
Ltd (1996) 37 IPR 41 -- Day Neilson and Price Waterhouse v Matthey & Ors (1996) 37
IPR 76 -- Triumph International v ACP Publishing Pty Ltd -- Patent Gessellschaft AG v
Saudi Livestock Transport & trading Co. -- Sun World Inc. v Registrar, Plant Variety
Rights and Murray Valley Grape Growers Council.
Subject: Intellectual property--case law--Australia
Subject: Trade marks--case law--Australia
Subject: Patents--case law--Australia
SNIPER No.: 2013/01901
Author: Wiegerinck, Marlies
Title: Customs enforcement in the Benelux: a proposed broadened protection
Source: World Intellectual Property Review. May-June 2013, p. 98.
Summary: Benelux and the Netherlands form a large port for the import of goods from
outside the European Economic Area (EEA) -- an increasing amount of counterfeit
goods and goods obtained by piracy enter the European market through these ports -counterfeits limit innovation and growth -- endanger health and consumer safety -European Customs Enforcement Directive -- scope of the directive -- main difficulty
under current regulations -- rights owners cannot act against goods that have an 'in
transit' status -- proposals for the new Customs Enforcement Directive and the new
Trademark Directive.
Subject: Customs--Benelux
Subject: Intellectual property enforcement--Benelux
SNIPER No.: 2013/01464
Author: Crowne-Mohammed, Emir Aly
Title: Dexilant not 'innovative drug' under Canada's Food and Drug Regulations
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 7, July 2013, pp.
518-520.
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Summary: Takeda Canada Inc v Canada (Health), 2013 FCA 13, 18 January 2013 -majority of the Federal Court of Appeal refused to list Takeda's acid reflux drug Dexilant
as an innovative drug, under Canada's Food and Drug Regulations -- Canada's data
protection regime provides a degree of market exclusivity for 'innovative drugs' against
generic competition -- what determines 'new chemical entities' -- protection of
pharmaceuticals under Trade-related Aspects of Intellectual Property Rights (TRIPS).
Subject: Pharmaceutical industry--case law--Canada
SNIPER No.: 2013/02076
Author: Fairbairn, John
Title: Digital revolution for copyright: the ALRC releases its discussion paper for
copyright reform
Source: Australian Intellectual Property Law Bulletin. Vol. 26 No. 3, September 2013,
pp. 58-62.
Summary: Australian Law Reform Commission paper "Copyright and the digital
economy" -- proposed amendments to the Copyright Act 1968 to keep up with the digital
age -- the review's framework -- key proposals -- fair use and fair dealing -- repeal of
statutory licences for educational institutions and governments -- retransmission of freeto-air broadcasts -- broadcasting -- contracting out -- initial reactions -- other reform
proposals --next steps -- final report due by November 2013
Subject: Copyright--reviews
Subject: Fair use (Copyright)
Subject: Copyright licensing
Subject: Television broadcasts
SNIPER No.: 2013/01459
Author: Curry, Josephine
Title: 'DISCOVERY HISTORY' TV channel does not infringe 'THE HISTORY
CHANNEL'
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 7, July 2013, pp.
505-507.
Summary: A & E Television Networks LLC, AETN UK v Discovery Communications
Europe Ltd [2013] EWHC 109 (Ch), High Court, Chancery Division, England and Wales,
1 February 2013 -- Judge ruled that registered trade mark rights and goodwill in various
'HISTORY' marks (including 'THE HISTORY CHANNEL') cannot prevent the use of
'DISCOVERY HISTORY' for a television channel -- the word HISTORY identifies the
characteristics of the channel -- examined a survey and witness-gathering exercise in
light of the Court of Appeal's judgment in Interflora -- passing-off and trade mark
infringement -- difficulties in enforcing the potentially narrow scope of protection
provided by trade mark rights -- courts to take a more restrictive view of witnessgathering exercises.
Subject: Trade mark infringement--culture and entertainment industry--United Kingdom
Subject: Passing-off--United Kingdom
SNIPER No.: 2013/02168
Author: Nargolkar, Adheesh
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IP Australia Library
Title: Doing business in India: the dos and don'ts for brands
Source: World Trademark Review. No. 45, October-November 2013, pp. 68-72.
Summary: Liberalisation of the Indian economy -- numerous changes to the Indian
trade mark space -- trade mark attorneys involved in doing trade mark due diligence
and advisory work on mergers and acquisitions -- due diligence -- identification of trade
marks -- conflicting mark search -- trade mark applications and registrations -- trade
marks registry -- recorded names -- distinctiveness -- specification of goods or services
-- date of first use -- colour claims -- examination report / office action -- hearing stage -conditions or limitations on registration -- associated trade marks -- opposition -registration -- post-registration recordals -- litigation -- domain names -- licensing -- joint
ventures -- assignment of trade marks -- separate deed of assignment -- trade marks
registry branches -- territory -- goodwill -- documentary requirements -- encumbrance
agreements -- future-proofing your transactions.
Subject: Mergers and takeovers--India
Subject: Trade marks--India
SNIPER No.: 2013/01599
Author: Cornwell, Jane
Title: Dyson and Samsung compared: functionality and aesthetics in the design
infringement analysis
Source: European Intellectual Property Review. Vol. 35 No. 5, 2013, pp. 273-286.
Summary: Functionally influenced designs -- background of the European design
regime -- role of the concept of 'design freedom' in moderating the protection of
functionally influenced designs -- judgments of the General Court in Grupo Promer case
-- Dyson v Vax -- Samsung v Apple -- comparison of the treatment of functionally
influenced designs in the infringement analysis in both cases -- two different
approaches to 'design freedom'.
Subject: Industrial design infringement--case law--United Kingdom
Subject: industrial designs--law and legislation--Europe
SNIPER No.: 2013/01945
Author: Cruickshank, Mark
Title: Earlier Community trade mark enforceable against later Community trade mark
without prior invalidation
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 8, August 2013,
pp. 586-587.
Summary: Court of Justice of the European Union (CJEU) clarifies dispute involving
two competing registered trade marks -- Fédération Cynologique Internationale (FCI) v
Federación Canina Internacional de Perros de Pura Raza (FCIPPR) -- FCI responsible
for the administration of dog pedigrees worldwide -- FCI CYNOLOGIQUE
INTERNATIONALE -- Article 9(1) of Regulation 207/2009 -- Article 54 of the Regulation
-- non-payment of relevant fee prevented FCI from opposing later registration -- decision
allows earlier right holder to enforce and protect their mark -- costly and time-consuming
to require invalidity proceedings -- significance to UK courts and s 11(1) of the Trade
Marks Act 1994.
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Subject: Trade mark infringement--case law--Europe
Subject: Trade mark validity--case law--Europe
Subject: Trade marks--law and legislation--Europe
SNIPER No.: 2013/02088
Author: Zeitsch, John
Added author: IP Australia
Added author: Verve Economics
Title: The economic value of the Australian innovation patent: the Australian innovation
patent survey
Source: Economic Value of the Australian Innovation Patent. 2013.
General Note: Report prepared for IP Australia.
Summary: Analysis of Innovation patent applications -- by IP Australia field of
technology -- by applicant type -- previous studies -- previous reviews of the innovation
patent system -- economic effects of second tier patents -- insights from theoretical
models and empirical studies -- conclusions drawn -- the Australian innovation patent
survey -- utility model patents -- small to medium business enterprises and individuals -main reasons inventors used innovation patents -- faster grant time and lower cost of
innovation patents were the main reasons inventors preferred innovation patents over
standard patents -- first to market nominated by inventors as the main alternative to
innovation patents -- research suggests that the economic effect of utility models
decreases with the rise of technological capacity in industries and countries.
Subject: Value of intellectual property--Australia
Subject: Intellectual property--statistics--Australia
Subject: Patents--statistics--Australia
SNIPER No.: 2013/02143
Author: Mills, Oliver
Title: Exceptions to patentability: Australia v Europe
Source: Bio-Science Law Review. Vol. 13 No. 2, 2013, pp. 49-67.
Summary: Patentability -- biotechnology industry -- eligibility for patent protection -novelty -- inventive step -- industrial application -- historical perspective -- Strasbourg
Convention 1963 -- European Patent Convention 1973 -- how judicial activism has
reshaped traditional patent law criteria in Australia in respect of emerging technology -High Court of Australia: Joos v Commissioner of Patents -- Federal Court of Australia -review of case law in Australia -- review of case law New Zealand -- the situation in
Europe -- Article 53 (b) jurisprudence -- Article 53 (a).
Subject: Biotechnology industry
Subject: Patentability--biotechnology industry--Australia
Subject: Patentability--biotechnology industry--New Zealand
Subject: Patentability--biotechnology industry--Europe
SNIPER No.: 2012/01572
Author: Robinson, Daniel
Added author: International Centre for Trade and Sustainable Development
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IP Australia Library
Added author: ICTSD Programme on IPRs and Sustainable Development
Title: Exploring components and elements of sui generis systems for plant variety
protection and traditional knowledge in Asia
Source: Exploring Components and Elements of Sui Generis Systems for Plant Variety
Protection and Traditional Knowledge in Asia 2007.
General Note: A Study Commissioned by the International Centre for Trade and
Sustainable Development (ICTSD).
Summary: Existing national sui generis initiatives in Asia -- possible components and
elements of sui generis PVP and TK systems -- minimum requirements and scope of
protection -- new plant variety protection -- domestic (extant) plant variety protection -local plant variety protection -- wild plant variety protection -- access and benefit sharing
-- prior informed consent and material transfer agreements -- promoting domestic and
local plant innovations -- addressing farmers' rights concerns -- addressing food
sovereignty, food security and rural poverty -- traditional knowledge protection and
promotion -- indigenous and local community rights and customary protocols -administration, dispute settlement, enforcement and remedies -- recommendations.
Subject: Plant rights systems--Asia
Subject: Plant breeder's rights--Asia
SNIPER No.: 2013/01886
Author: Kryska, Aleksandra
Title: Facing the challenge: opposition procedure in Poland
Source: World Intellectual Property Review. May-June 2013, pp. 72-75.
Summary: Polish Patent Office (PPO) -- examines cases regarding declaring lapse or
cancellation of exclusive rights, or cancellation of a right of protection for a trade mark if
a third party files an opposition against the mark, and the holder says the opposition is
groundless -- Polish Law on Industrial Property -- PPO opposition procedure -- grounds
for opposition -- opposition filed with the PPO must comply with statutory formal
requirements -- essential that the legal basis is specified in the opposition -- six-month
term from trade mark publication for broadening the basis of opposition evidence -documents required -- genuine use -- cancellation.
Subject: Trade mark opposition--procedure--Poland
Subject: Trade mark cancellation--Poland
SNIPER No.: 2013/02097
Author: Pryor, Geoff
Title: Fair basis: a review of recent cases
Source: Intellectual Property Forum. No. 29, May 1997, pp. 8-13.
Summary: The law in Australia relating to fair basis -- summary of the principles
relating to fair basis -- Federal Court of Australia decisions -- Coopers Animal Health
Australia Ltd v. Western Stock Distributors 11 IPR 20 -- Interact Machine Tools (NSW)
Pty Ltd & Others v. Yamazaki Mazak Corporation (1993) AIPC 91-026 -- Anaesthetic
Supplies Pty Ltd v. Rescare Ltd (1994) 91-076 -- CCOM Pty Ltd and Another v. Jiejing
Pty Ltd and Others 27 IPR 577 -- Leonardis v. Sartas No. 1 Pty Ltd and Another 35 IPR
23.
Subject: Patent claims--Australia
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Subject: Patent validity--Australia
SNIPER No.: 2013/02124
Author: Lunney, Mark
Added author: Australia. Department of Agriculture, Fisheries and Forestry
Added author: Australian Centre for Intellectual Property in Agriculture
Title: A farmer's choice?: legal liability of farmers growing crops
Source: A Farmer's Choice?: Legal Liability of Farmers Growing Crops. 2006.
General Note: "A research paper prepared for the Department of Agriculture, Fisheries
and Forestry by the Australian Centre for Intellectual Property in Agriculture" - Cover.
Summary: Analysis of the private law liability of farmers growing crops -- legal
approach -- potential legal actions that might be brought against a farmer -- adjoining
landowners -- crops and damage -- damage and the law of negligence -- damage to
property and the duty of care -- reasonable foreseeability and risk -- reasonable
foreseeability and the duty of care -- foreseeability and breach of duty -- agricultural
uses and the law of nuisance -- liability of farmers for crops planted by others -- impact
of the regulatory environment on liability -- liability and environmental protection
legislation -- liability for trespass -- problem of causation -- comparative jurisdictions
Subject: Agriculture industry--liability--Australia
Subject: Damages--Australia
SNIPER No.: 2013/02045
Author: Crowne-Mohammed, Emir Aly
Title: Federal Court declares Canada's 'Official Marks' scheme constitutional
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 9, September
2013, pp. 673-675.
Summary: Constitutional challenge to official mark dismissed and respondent deemed
to be a public authority which had used the marks in accordance with the Act -- Council
of Natural Medicine College of Canada v College of Traditional Chinese Medicine
Practitioners and Acupuncturists of British Columbia -- section 9(1)(n)(iii) of the Trademarks Act, RSC, 1985 -- interpretation of 'adoption and use' -- mark must be displayed
independently and in public -- private corporation (the 'Council') providing Chinese
medicine education programmes v public authority (the 'College') which regulates the
practice of traditional Chinese medicine and acupuncture in British Columbia -- The
College began to use marks in 2007 and issue of public notice of marks occurred in
2009 -- grounds under which the official marks were challenged -- decision removes
grounds upon which an organisation may challenge an official mark -- possibility that
public authority may abuse this right.
Subject: Trade mark use--case law--Canada
Subject: Official marks--case law--Canada
SNIPER No.: 2013/02002
Author: Kravets, Leonid G.
Title: The first steps in developing machine translation of patents
Source: World Patent Information. Vol. 35 No. 3, September 2013, pp. 183-186.
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IP Australia Library
Summary: Present day machine translation (MT) systems -- historical perspective of
the experimental MT system (TSNIIPI) in Russia in the 1960s -- segmentation and
analysis of patent claim structures in TSNIIPI explained -- concludes current MT
systems and TSNIIPI principles could usefully be combined.
Subject: Translations
SNIPER No.: 2013/02060
Author: Bragdon, Susan H.
Added author: Quaker United Nations Office
Title: Food, biological diversity and intellectual property
Source: Briefing papers (Quaker United Nations Office). No. 1, 2013.
Summary: Small-scale farmers -- intellectual property, innovation and food security -importance of small-scale farmers -- World Intellectual Property Organisation (WIPO)
Intergovernmental Committee on Intellectual Property and Genetic Resources,
Traditional Knowledge and Folklore (IGC) and small farmer's innovation -- two
challenges relating to WIPO-ICG text -- links between the WIPO text and farmer
innovation -- objectives of the draft ensuring IP/patent offices have the required
information to prevent the granting of erroneous patents and misappropriation and
enhance transparency.
Subject: Farmers' rights
Subject: Plant breeder's rights--treaties
Subject: Plant rights systems
SNIPER No.: 2013/01888
Author: Collada, Laura
Title: Forging ahead with global IP standards
Source: World Intellectual Property Review. May-June 2013, pp. 78-79.
Summary: Mexican National Trademarks Office (IMPI) -- Mexico is not a priority
country for filing a trade mark application -- reasons Mexico should be considered a
priority country -- Mexico has worked hard to enhance its intellectual property (IP) rights
legal framework -- joining the Madrid Protocol -- Mexico lacks an opposition system -no multi-class applications are accepted -- challenging task to implement an opposition
system -- amendment to the Mexican Industrial Property Law -- establishing guidelines
for filing online applications -- IMPI has been working on classification, criteria, and
guidelines to improve transparency across the whole prosecution.
Subject: Intellectual property law--reform--Mexico
Subject: Intellectual property systems--Mexico
SNIPER No.: 2013/01465
Author: Mac Síthigh, Daithí
Title: The fragmentation of intermediary liability in the UK
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 7, July 2013, pp.
521-531.
Summary: System for intermediary liability (for mere conduits, hosts and search
engines) is splitting into a number of different systems -- in the case of copyright,
intermediaries (particularly mere conduits) have new duties -- defamation (and to a
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IP Australia Library
lesser extent privacy) -- new schemes are reducing the liability risk of hosts' under
certain circumstances -- result is that the single system of the Electronic Commerce
Directive (ECD) is being replaced by a mixture of EU and national legislation -- revived
common law doctrines and specific provisions for particular areas of law -- Section 97A
of Copyright, Designs and Patents Act (CDPA) -- blocking injunctions under the Digital
Economy Act -- graduated response -- hosts a notice-based response -- definition of
notice -- a condition precedent publication and defamation law -- reform of the law of
defamation -- defamation as a special case -- search engines -- clamour for coherence.
Subject: Carriage service providers--liability--United Kingdom
Subject: Trade mark litigation--United Kingdom
Subject: Copyright--reform--United Kingdom
SNIPER No.: 2013/02089
Added author: Stockholm Network
Title: Free to trade?: IPRs, trade and pharmaceuticals in the 21st century
Source: Free to Trade: IPRs, Trade and Pharmaceuticals in the 21st Century. 2013.
General Note: A Stockholm Network discussion paper.
Summary: IPRs and trade: a conceptual analysis -- importance and impact of IPRs -biopharmaceuticals -- special nature of biopharmaceutical R&D -- patents, data
exclusivity, trade marks -- key components determining the strength of the
pharmaceutical IP environment -- term, scope and strength of exclusivity -- barriers to
full IP exploitation -- enforcement -- medicines and the evolution of the international IP
architecture --- three phases of TRIPS -- bilateral and multilateral trade agreements -strengthening and updating TRIPS -- controversial provisions -- working with and
alongside TRIPS -- blueprint for IP policy-making.
Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994
April 15)
Subject: Patents--pharmaceutical industry
Subject: International trade--treaties
Subject: Pharmaceuticals
Subject: Intellectual property rights
SNIPER No.: 2013/02034
Author: Wood, Ian
Title: Fundamental and far-reaching changes to the US patent system: the America
Invents Act
Source: European Intellectual Property Review. Vol. 35 No. 8, 2013, pp. 472-476.
Summary: America Invents Act -- several changes affecting the way patents and patent
applications are dealt with by the US Patent and Trademark Office -- principle changes
to the law -- prior art disclosures considered on a worldwide basis -- one year grace
period -- best mode requirement -- damages tripled if there is wilful infringement -prioritised examination -- virtual marking -- proceedings in the USPTO relating to
patents will be fundamentally different to those previously.
Subject: United States. Leahy-Smith America Invents Act
Subject: Patents--reform--United States
Subject: Patents--law and legislation--United States
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Subject: Patent opposition--United States
SNIPER No.: 2013/02204
Author: Sherkow, Jacob S.
Title: The future of gene patents and the implications for medicine
Source: JAMA Internal Medicine. Vol. 173 No. 17, 23 September 2013, pp. 1569-1570.
Summary: Association for Molecular Pathology v Myriad Genetics -- US Supreme
Court ruling on 13 June 2013 -- naturally occurring genes cannot be patented -synthetic transcripts of genes are patentable -- analysis of the decision -- more
competitive markets for diagnostic genetic testing for BRCA genes -- Myriad has an
extensive and exclusive database of previous customers' mutations -- other genetic
tests have not caused similar patent controversies -- patents either not asserted or
licensed non-exclusively or on easy terms -- Myriad decision will probably not hamper
investment in genetic research -- some interpretations of the decision might affect
pharmaceutical research -- decision will be good for the patent litigation business
Subject: Genes--patentability--United States
Subject: Patenting of life forms--case law--United States
Subject: Medical procedures
SNIPER No.: 2013/01944
Author: Matheson, Sarah
Title: Gene patents: a win for all
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 8, August 2013,
pp. 584-585.
Summary: Australian Federal Court confirms that isolated DNA and RNA are
patentable subject matter -- Cancer Voices Australia (CVA) v Myriad Genetics Inc -BRCA1 -- detect pre-disposition to breast and ovarian cancers -- question mark over
patentability under Australian law -- accredited testing service offered by Genetic
Technologies -- CVA's arguments -- scientific discovery of biological fact -- manner of
manufacture and patentability -- patentable inventions and the biological processes for
the generation of human beings -- analysis -- naturally occurring nucleic acids inside
cells of the human body are not patentable -- novelty, inventive step and usefulness
requirements -- appeal filed -- possible settlement of the issue and the future of
Australia's biotechnology industry -- decision in line with the position in Europe, the
United Kingdom and the United States -- Australian legislation in relation to intellectual
property rights and biological materials -- Intellectual Property Laws Amendment
(Raising the Bar) Act 2012.
Subject: Gene sequences--patentability--Australia
Subject: Patentability--case law--Australia
Subject: Patentability--biotechnology industry--Australia
Subject: Biotechnology--law and legislation--Australia
SNIPER No.: 2013/02136
Author: Pyrah, Alli
Title: Generics don't get an easy ride in Canada
Source: Managing Intellectual Property. No. 232, September 2013, pp. 54-55.
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Summary: Interview with Jim Keon, president of the Canadian Generic Pharmaceutical
Association -- biggest issues for generic pharmaceutical companies -- how the
Canadian Generic Pharmaceutical Association has been working to improve these
issues -- recent important legal decisions -- effect of different healthcare systems in the
United States and Canada on generic companies -- position on the Comprehensive
Economic and Trade Agreement (CETA) negotiations with the EU -- growth areas over
the next decades -- selecting outside law firms to handle patent work.
Subject: Keon, Jim--interviews
Subject: Pharmaceuticals--Canada
SNIPER No.: 2013/01453
Author: Rosati, Eleonora
Title: The German 'Google Tax' law: groovy or greedy?
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 7, July 2013, p.
497.
Summary: Passing of the German Bundesrat, Leistungsschutzrecht fur Presseverlege
(LSR) -- bill extends press publishers copyright by providing them with an ancillary right
over news content -- became known as the Google Tax Law -- provides for the
exclusive right of press publishers to exploit their contents commercially for one year -prevents search engines from displaying excerpts from newspaper article without
paying a fee -- text approved does not clarify the length that is required to fall within the
exception -- LSR does not expressly prohibit mere linking but from a broader EU
perspective, EU asked to clarify whether a clickable link might constitute a
communication to the public -- forthcoming decision in Case C-466/12 Svensson has
the potential to have a profound impact on the way the internet functions.
Subject: Electronic copyright--law and legislation--Germany
SNIPER No.: 2013/01958
Added author: Germany. Bundesgerichtshof
Title: German request for a preliminary ruling on the permissibility of terminals in
libraries: Electronic Reading Stations (Elektronische Leseplätze)
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 8, August 2013,
pp. 655-660.
Summary: Harmonisation of electronic copyright -- questions referred to Court of
Justice of the European Union (CJEU) by the German Federal Court of Justice -- case
no IZR 69/11 -- Article 5(3)(n) of European Parliament and Council Directive
2001/29/EC -- publishing company versus public library -- digitized book available on
library terminals -- copyright limitations in the German Copyright Act -- Einführung in die
neuere Geschichte (Introduction to Modern History) -- legal analysis and findings.
Subject: Electronic copyright--case law--Germany
Subject: Electronic copyright--harmonisation--Europe
Subject: Libraries--Germany
SNIPER No.: 2013/01889
Author: Khalid, Azlina Aisyah
Title: Getting down and personal: the Personal Data Protection Act
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Source: World Intellectual Property Review. May-June 2013, pp. 80-81.
Summary: Personal Data Protection Act (PDPA) -- personal information was protected
as confidential information -- now a regulatory framework as to how personal data is
allowed to be used -- key objective of the PDPA -- processing of data -- PDPA has
introduced the seven principles of data protection -- impact of the PDPA -- the Industrial
Designs (Amendment) Act 2013 -- Malaysian IP Office (MyIPO) is expected to introduce
amendments to the Industrial Design Regulations -- primary changes.
Subject: Information technology industry--law and legislation--Malaysia
Subject: Industrial designs--law and legislation--Malaysia
SNIPER No.: 2013/02189
Author: Jewell, Catherine
Title: Global innovation index 2013
Source: WIPO Magazine. No. 4, August 2013, pp. 11-13.
Summary: Global Innovation Index (GII) -- R&D spending in the rise -- focuses on the
local dynamics of innovation, reflecting the importance of innovation hubs, such as
Silicon Valley in the United States and Daedok Innopolis in the Republic of Korea
(ROK), in fostering a virtuous cycle of innovation, growth and employment -Switzerland and Sweden topped the GII's rankings -- persistent innovation divide -rapid progress of innovation learners -- dynamics of local innovation -- institutions,
human capital and research, infrastructure, market and business sophistication -knowledge and technology outputs -- creative outputs.
Subject: Innovation (Technological)
Subject: Economic development
SNIPER No.: 2013/01454
Author: Clark, Birgit
Title: Gold bear wars
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 7, July 2013, p.
498.
Summary: European Union's Trade Mark Directive -- Regional Court of Cologne
(Landgericht Köln), 33O 803/11, 18 December 2012 -- claim brought by Haribo against
competitor Lindt over three-dimensional gold-foiled chocolate bears -- infringing 'visual'
representation of Haribo's well-known GOLDBAREN gummy bear word marks -- Lindt
argued that the competing products did not look in any way similar and would not be
confused -- conceptual similarity -- trade mark owners want clear guidance awaiting
Bundesgerichtshof decision.
Subject: Trade mark infringement--case law--Germany
Subject: Shape marks--case law--Germany
Subject: Famous trade marks--Germany
SNIPER No.: 2013/01883
Author: Muralidharan, R.
Title: A good start: developing Indian patent jurisprudence
Source: World Intellectual Property Review. May-June 2013, pp. 62-65.
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Summary: Principles enshrined in the Constitution of India -- welfare of many is always
preferred against the profits of a few -- principles visible in the Supreme Court Decision
involving pharmaceutical giant Novartis AG -- upheld the decision of the Intellectual
Property Appellate Board (IPAB) to disallow the grant of a patent for Glivec -- Novartis
was unable to prove the enhancement in therapeutic efficacy of its drug as compared to
the original substance -- prior to the constitution of the IPAB, the appellate jurisdiction
was exercised by four different High Courts -- conflicting decisions by different High
Courts on the same point -- other cases decided by the IPAB -- IPAB has contributed to
the progressive evolution of patent jurisprudence.
Subject: Patents--case law--India
Subject: Patents--law and legislation--India
SNIPER No.: 2013/02164
Author: Ellis, Jack
Title: Grand designs for trademark counsel
Source: World Trademark Review. No. 45, October-November 2013, pp. 52-57.
Summary: Introduction of a pan-European Union (EU) design right -- the registered
Community design (RCD) -- unregistered EU-wide design protection -- has made design
protection significantly cheaper and easier -- evolving case law has made industrial
design protection more attractive in the United States -- Egyptian Goddess v Swisa -landmark in design rights jurisprudence -- consumers have played an important part in
changing brand owners' attitudes towards design rights -- important way of
distinguishing products from competitor's products -- strategic perspective -- possible
benefit of design rights is their lifespan -- lack of global harmonisation -- two different
systems of protection are used throughout the world -- which in-house team, trade mark
or patent, is best equipped to manage designs registration and enforcement -- trade
mark professionals are well placed to take a leadership role on designs protection.
Subject: Industrial design rights
Subject: Intellectual property industry
SNIPER No.: 2013/00795
Author: Levine, Jay L.
Title: Green marketing can turn you blue...if you aren't careful
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 1, December 2012January 2013, p. 48.
Summary: Marketing in the United States -- making claims related to environmental
benefits -- US Federal Trade Commission has issued revised 'Guides for the Use of
Environmental Marketing Claims' (Green Guides) -- consumer protection principles -making claims that would mislead a reasonable consumer -- Green Guide gives
guidance regarding 14 types of claims -- general environmental benefits -- carbon
offsets -- compostable -- degradable -- "free-of" -- recyclable -- renewable energy
Subject: Environmental issues in intellectual property--United States
Subject: Consumer protection--United States
Subject: Marketing--United States
SNIPER No.: 2013/02169
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Author: Low, Eugene I.
Title: Group buying sites: a trademark perspective
Source: World Trademark Review. No. 45, October-November 2013, p. 73.
Summary: Group buying sites increasing in popularity in China -- provide a platform
allowing individual buyers to club together to purchase products in bulk and at a
discount -- what liabilities should group buying sites bear if the products on sale infringe
trade mark rights? -- Beijing Higher People's Court -- Le Coq Sportif brand and its 'cock'
device mark -- Le Coq Sportif goods sold on the group buying site operated by Beijing
Today, www.didatuan.com -- points made by the court -- case was significant in
clarifying the scope of obligations of the operator of a group buying site -- underlines the
degree of due diligence that operators of group buying sites might need to undertake in
respect of trade mark clearance.
Subject: Trade mark infringement--liability--China
Subject: Trade mark infringement--case law--China
SNIPER No.: 2013/02137
Author: Nurton, James
Title: The healthcare system needs stronger IP protection
Source: Managing Intellectual Property. No. 232, September 2013, pp. 56-57.
Summary: Interview with Declan Hamill, chief of staff and vice president for Rx&D -issues faced by research-based pharmaceutical companies -- why -- what's the
prognosis? -- is Canada more friendly to generics? -- what role do the courts play? -Comprehensive Economic and Trade Agreement (CETA) estimated to cost Canadians
up to $2 billion, is it justified? -- other issues -- is there a place for compulsory licensing?
Subject: Hamill, Declan--interviews
Subject: Health and community services industry--Canada
SNIPER No.: 2013/02073
Author: Vogel, Jason M.
Title: How ethics rules can be used to address trademark bullying
Source: Trademark Reporter. Vol. 103 No. 2, 2013, pp. 503-518.
Summary: Overly aggressive tactics used to enforce rights of trade mark owners
beyond the legal protection -- the 'cease and desist letter' -- how aggressive is too
aggressive? -- existing legal mechanisms to combat over-aggressive assertions of trade
mark rights -- proposed anti-bullying legislation -- self-help measures - shaming the
bully -- ethics rules as a possible framework
Subject: Trade mark enforcement--United States
Subject: Trade mark owners' rights
Subject: Ethics--United States
SNIPER No.: 2013/02139
Author: Zischka, Matthew
Title: How the Amazon ruling affected business-method patents
Source: Managing Intellectual Property. No. 232, September 2013, pp. 61-63.
Summary: Canadian Intellectual Property Office (CIPO) -- struggled to give patent
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implemented inventions -- recent attempts to provide guidance -- provisions of the
Patent Act -- Amazon.com v The Commissioner of Patents -- history of the case -Federal Court of Appeal's decision -- CIPO's 2013 guidelines.
Subject: Business methods--patentability--Canada
Subject: Computer-related inventions--patentability--Canada
Subject: Patentability--case law--Canada
SNIPER No.: 2013/02119
Author: Chandra, Sagar
Title: The impact of India's Copyright Amendment Act
Source: Managing Intellectual Property. India IP Focus, 2013, pp. 38-42.
Summary: Recent developments and future issues in broadcasting and media laws, in
light of technological advancements that show little regard for territories or boundaries -Copyright Amendment Act of 2012 -- measures to fight piracy -- Technological
Protection Measures -- ex parte John Doe injunctions -- challenges to the Copyright
Amendment 2012 -- trends in John Doe orders -- Hot News Doctrine -- the
parliamentary dragon has roared fire with the amendment of 2012 -- a long battle of
interests has begun.
Subject: Copyright--reform--India
Subject: Copyright--law and legislation--India
SNIPER No.: 2013/01900
Author: Arroyo, Elizabeth
Title: IMPI: the unheard specialist in IP crimes
Source: World Intellectual Property Review. May-June 2013, p. 97.
Summary: Counterfeiting represents a huge obstacle in the development of an
economy -- effects are wide ranging -- today, almost every product is counterfeited -Mexican Industrial Property Law (MIPL) -- criminal actions filed by intellectual property
(IP) rights owners to deal with trademark counterfeiting are increasing in number -Attorney General's Office (GAO) requires the opinion of an expert witness to determine
whether a trade mark has been counterfeited or not -- who should provide such an
expert witness opinion? -- in some cases the GAO expert witness requires trade mark
holders to provide an original and identical product to compare it to the presumably
counterfeited merchandise and issue its opinion -- many criminal actions are held up at
the initial stage -- product counterfeiting instead of trade mark counterfeiting -- conflict
might be resolved if the GAO asked for the Mexican Institute of Industrial Property's
(IMPI's) opinion on this kind of case.
Subject: Counterfeiting--Mexico
Subject: Expert witnesses--Mexico
SNIPER No.: 2013/02096
Author: Sexton, Christopher
Title: In conversation with Brian Kewley
Source: Intellectual Property Forum. No. 29, May 1997, pp. 4-5.
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Summary: Interview with Brian Kewley -- former president of the Intellectual Property
Society of Australia -- laywer -- legal practice -- development in the field of intellectual
property practice -- artistic pursuits -- winemaker.
Subject: Kewley, Brian--interviews
Subject: Lawyers--interviews--Australia
SNIPER No.: 2013/02102
Author: Sexton, Christopher
Title: In conversation with the Honourable Ian Sheppard, AO, QC
Source: Intellectual Property Forum. No. 30, August 1997, pp. 3-5.
Summary: Interview with Justice Ian Sheppard -- appointment to the Industrial
Commission of New South Wales -- Supreme Court of New South Wales appointment -transfer from a superior state court to the Federal Court of Australia -- retired judge from
the Federal Court of Australia -- Order of Australia recipient -- Queens Counsel.
Subject: Sheppard, Ian Fitzhardinge 1927-,--interviews
Subject: Lawyers--interviews--Australia
SNIPER No.: 2013/02081
Author: Cossey, Matthew
Title: Inappropriate laws and a lack of leadership: brakes on innovation
Source: Australasian Biotechnology. Vol. 23 No. 2, July 2013, pp. 39-40.
Summary: New technologies in the agricultural biotechnology field in Australia -- break
in progress -- fear of technology -- Australian Government releases National Food Plan
White Paper -- recognising biotechnology is essential to meeting future food needs in
Australia and the world -- committed to improving regulation in ways that drive
innovation -- perception that a large population are concerned of the risks of biotech
crops -- support for GM crops -- bridging the gap in public understanding -- improved
communication on the risks and benefits -- removing misleading, unscientific and
obsolete laws like state moratoria.
Subject: Biotechnology--agriculture industry--Australia
SNIPER No.: 2013/00789
Author: Anand, Nishchal
Title: India's copyright law extended to technology
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 1, December 2012January 2013, pp. 33-34.
Summary: India's Copyright (Amendment) Act 2012 -- extends copyright regime -limited protection to network or internet service providers -- safe harbour provisions for
protection for ISPs against copyright infringement -- copyright protection against
circumvention of technological protection measures -- copyright protection for consumer
electronics -- two-dimensional drawings of electronic goods as well as threedimensional reproductions of the original 2D drawings protected
Subject: Copyright--law and legislation--India
Subject: Circumvention--India
SNIPER No.: 2013/01600
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Author: Źelechowski, Łukasz
Title: Infringement of a Community Trade Mark: between EU-wide and non-EU-wide
scope of prohibitive injunctions
Source: European Intellectual Property Review. Vol. 35 No. 5, 2013, pp. 287-296.
Summary: Issue of the territorial scope of prohibitive injunctions in cases of
infringements of Community Trade Marks -- judgment of the Court of Justice of the EU
(CJEU) in DHL Express France v Chronopost SA -- judgment perceived as providing a
general guidance -- significance of the principle of the unitary character of the CTM -territorial limitation of an action by the claimant -- author analyses various factors which
could potentially justify a non-EU-wide scope of injunctions.
Subject: Community trade mark
Subject: Trade mark infringement--case law--Europe
Subject: Injunctions--Europe
SNIPER No.: 2013/02083
Added author: IP Australia
Title: Innovation patents: raising the step: consultation paper
Source: Innovation Patents: Raising the Step: Consultation Paper. September 2012.
Summary: IP Australia released consultation paper on 25 September 2012 -- invited
public comment on a proposal to amend the Patents Act 1990 -- raise the patentability
threshold for Innovation Patents to the same level of inventiveness as required for
standard patents -- aims to support innovation among small to medium enterprise by
ensuring only high quality patents are granted -- includes attachment with drafting
instructions for the proposed "Inventive Step Threshold Intellectual Property Laws
Amendment Bill 2012" -- submissions close 25 October 2012.
Subject: Minor patents--reform--Australia
Subject: Patent systems--reform--Australia
Subject: Inventive step--Australia
SNIPER No.: 2013/02125
Added author: Australian Centre for Intellectual Property in Agriculture
Added author: Horticulture Australia
Title: Intellectual property and the commercialisation of research and development: a
guide for horticulture industries
Source: Intellectual Property and the Commercialisation of Research and
Development: a Guide for Horticulture Industries. October 2006.
General Note: "This guide was prepared independently by the Australian Centre for
Intellectual Property in Agriculture with funding from Horticulture Australia Limited
(Project HG04020 'Maximising the Benefits of Intellectual Property for the Australian
Horticulture Industry')".
Summary: Issues related to the management and commercialisation of intellectual
property (IP) -- forms of IP rights --plant breeder's rights, patents, trade marks, copyright
-- acquisition IP rights in Australia and overseas -- ownership of IP -- freedom to operate
-- exploitation and commercialisation of IP -- modes of commercialisation -- restrictions
on contractual freedom -- common law rules -- statutory protection for creators --
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competition law -- enforcing IP rights -- methods of resolving disputes -- procedure,
costs and risks in bringing an action -- civil remedies -- criminal offences
Subject: Intellectual property management--agriculture industry--Australia
Subject: Intellectual property ownership--agriculture industry--Australia
Subject: Intellectual property enforcement--agriculture industry--Australia
SNIPER No.: 2013/02121
Added author: Horticulture Australia
Author: Australian Centre for Intellectual Property in Agriculture
Title: Intellectual property for horticulture: an overview
Source: Intellectual Property for Horticulture: an Overview. 2008.
General Note: "This booklet was prepared independently by the Australian Centre for
Intellectual Property in Agriculture with funding from Horticulture Australia Limited
(project HG07051 "Intellectual Property Education and Training for the Australian
Horticulture Industries" 2007-2010". Publication number: HAL/ACIPA 10/08.
Summary: General introduction to intellectual property (IP) rights in Australia -- reasons
for IP rights -- nature of IP rights -- protection of creators -- registration and creation of
rights -- detail on IP rights most relevant for horticulture industries -- plant breeder's
rights -- patents -- trade marks -- copyright -- other IP rights dealt with in less detail -moral rights -- confidential information
Subject: Intellectual property systems--Australia
Subject: Patent systems--Australia
Subject: Plant rights systems--Australia
SNIPER No.: 2013/00790
Author: Rana, Lucy
Title: Intellectual property in India's evolving publishing industry
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 1, December 2012January 2013, pp. 35-36.
Summary: Thriving print and publication industry in India -- low level of awareness
about intellectual property rights -- relevance of IP management to the publishing
business -- IP rights that publishers need to understand in order to exploit it as an
economic asset and to avoid infringement -- copyright -- term of copyright -- legislative
framework for copyright protection -- trade marks and brand awareness -- domain
names -- trade secrets -- digital publication and IP -- need for an IP audit to identify IP
assets relevant to e-commerce before drafting business plans for e-business -publishers should take all essential steps to secure, protect and enforce their IP rights
Subject: Intellectual property awareness--culture and entertainment industry--India
Subject: Intellectual property rights--culture and entertainment industry--India
SNIPER No.: 2013/02091
Author: Naghavi, Alireza
Added author: Fondazione Eni Enrico Mattei
Title: Intellectual property rights, product complexity and organization of multinational
firms
Source: FEEM Nota di Lavoro, no.78. 2011.
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Summary: IPR regime in destination countries influences the way multinationals divide
tasks of different complexities across countries with different levels of IPR protection -theoretical framework -- data on the organisation of French multinationals -procurement and outsourcing to independent suppliers -- technology sharing
outsourcing IPRs promotes outsourcing of more complex goods -- non-technology
related-outsourcing IPRs attract the outsourcing of less complex products -- more prone
to reverse engineering and simpler to decodify and imitate.
Subject: Intellectual property management
Subject: Outsourcing
SNIPER No.: 2013/02041
Author: Wilkof, Neil J.
Title: IP and immigration: are there winners and losers?
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 9, September
2013, p. 667.
Summary: The effect of immigration on the intellectual property activity of a nation -the role of IP in immigration reform in the United States -- desire to encourage inventive
immigrants to migrate and stay in the US -- appears that certain communities of hi-tech
immigrants are well represented as patent inventors -- at the national level however the
gain that the adopted country obtains may be offset by the loss by the home country -another scenario suggests that a point is reached where a diaspora effect is created
and creative interaction between colleagues from the adopted and home country occurs
-- research does support this win-win IP result -- Japan as an example of a top patent
filing nation but one with low levels of immigration -- certain Western nations that do
have a history of accepting immigrants may enhance IP activity by utilising this feature
of their society.
Subject: Intellectual property
Subject: Intellectual property--social aspects
Subject: Social change--United States
SNIPER No.: 2013/02191
Author: Jewell, Catherine
Title: IP and philanthropy: the Gates Foundation's approach
Source: WIPO Magazine. No. 4, August 2013, pp. 17-20.
Summary: Bill & Melinda Gates Foundation -- Foundation believes the power of
innovation to solve problems -- interview with Richard Wilder, Associate Legal Counsel
for the Foundation's Global Health Program -- role of intellectual property plays in the
Foundation's work -- maximising impact -- power of partnership -- IP managed to
achieve global success -- Foundation pushing for new solutions to improve global
health, alleviate world hunger and poverty in the developing world -- program targets
established researchers in science and technology.
Subject: Medical research--funding
Subject: Intellectual property management
SNIPER No.: 2012/00971
Added author: IP Australia
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Title: IP Australia proposed fee changes 2009-2010: consultation paper
Source: IP Australia Proposed Fee Changes 2009-2010: Consultation Paper. October
2008.
Summary: IP Australia undertaking a review of existing cost recovery arrangements
and fees -- in accordance with the Australian Government Cost Recovery Guidelines,
2005 -- key principals for the review -- ensure customers are paying a fair and
reasonable amount for services provided by IPA -- keep fees as low as possible while
ensuring financial sustainability for IP Australia -- produce a Cost Recovery Impact
Statement (CRIS) documenting the cost recovery arrangements -- Consultation Paper
released October 2008 -- outline of proposed fee changes and rationale for change -feedback to be submitted by 31 October 2008 -- fee changes planned to be
implemented on 01 July 2009, pending the outcome of the consultation process
Subject: Patent fees--reviews--Australia
Subject: Trade mark fees--reviews--Australia
Subject: Industrial design fees--reviews—Australia
SNIPER No.: 2013/01993
Author: O'Connell, Donal
Title: IP risk mitigation
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of
Patent Agents. Vol. 42 No. 7, July 2013, pp. 393-394.
Summary: Intellectual property risk mitigation -- IP risk register -- logging risks into the
IP risk register -- 'active' IP risk register -- IP risk mitigation techniques -- skills and
competencies needed -- IP mitigation tool kit -- important that business is aware of the
full range of techniques available to recognise, manage and mitigate IP related risks.
Subject: Value of intellectual property
Subject: Risk--management
SNIPER No.: 2013/01992
Author: Brassell, Martin
Title: IP valuation: high time for standardised indicators
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of
Patent Agents. Vol. 42 No. 7, July 2013, pp. 391-392.
Summary: Intangible assets, such as IP, not instinctively understood -- physically and
financially invisible -- relationship between IP and value creation -- Sollomon valuation
system used in the United Kingdom -- identified intangible asset value across a range of
businesses -- majority fell into small and medium enterprise (SME) category -- where IP
adds value: the theory and the practice -- challenge of valuation -- achieving
consistency.
Subject: Value of intellectual property--economics
Subject: Intellectual property management--United Kingdom
SNIPER No.: 2013/02006
Author: Gennari, Udo
Title: IPR training and tools for better handling of IPR topics by SMEs
Source: World Patent Information. Vol. 35 No. 3, September 2013, pp. 214-223.
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Summary: Poor handling of intellectual property rights (IPR) by small and medium
enterprises (SMEs) -- existing IPR tools developed for larger companies and IP experts
-- project undertaken in Austria -- role of IPR in different stages of the innovation
process -- seven free, easy-to-use IPR tools developed specifically for the needs of
SMEs -- guideline for patent searches -- tool for interpretation of patent search results -decision guidance: patent or secret know-how -- lean and proper administration of own
IPR -- calculation tool for IPR cost prediction -- guideline for design patents -- guideline
for measures against product piracy -- IPR training based on the demonstration of these
tools -- practical exercises using them -- lessons learned from this approach
Subject: Small and medium enterprises--Austria
Subject: Intellectual property management--Austria
SNIPER No.: 2013/01466
Author: Warner, Sara
Title: Is there a role for Euro-defences following Sun v M-Tech?
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 7, July 2013, pp.
532-538.
Summary: Trade mark proprietors have the right to control the first marketing of goods
bearing their marks in Europe -- where the exercise of this right impedes the free
movement of goods or involves anti-competitive behaviour, parallel importers may have
a defence (Euro-defence) against trade mark infringement claims -- Sun v M-Tech, the
Supreme Court granted summary judgment in favour of the trade mark proprietor -confirmed that trade mark proprietors may control the first entry of goods bearing their
marks into Europe without the delay and expense of a trial -- free movement defence -competition defence -- abuse of rights defence -- decision is likely to be welcomed by
trade mark proprietors seeking to exercise more efficiently the right to control the first
entry of goods bearing their marks into the European Economic Area (EEA) -obscurities surrounding the existing case law on Euro-defences, which the Supreme
Court itself acknowledged, constitute a compelling reason why Sun v M-Tech should
have gone to trial.
Subject: Parallel importing--United Kingdom
Subject: Trade mark infringement--case law--United Kingdom
SNIPER No.: 2013/02099
Author: Tessensohn, John A
Title: Japan's Trademark Law
Source: Intellectual Property Forum. No. 29, May 1997, pp. 24-27.
Summary: Summary of changes to Japan's Trade Mark law -- protection of famous
trade marks -- control measures against non-use of trade marks -- measures to
expedite registration -- implementation of the Trademark Law Treaty -- non-use
cancellation appeal -- post-registration opposition system -- preliminary rejection -abolition of the Associated Trademark System.
Subject: Intellectual property systems--reform--Japan
Subject: Intellectual property law--reform--Japan
SNIPER No.: 2013/01987
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Author: Buchan, Robert
Title: A just destination after a long-haul litigation?
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of
Patent Agents. Vol. 42 No. 7, July 2013, pp. 373-375.
Summary: Patent infringement -- Virgin Atlantic Airways Limited v Zodiac Seats UK
Limited (formerly known as Contour Aerospace Limited) -- Supreme Court ruling
strongly disagrees with the Unilin principle -- key issue was whether the Court of Appeal
ruling between Virgin and Zodiac continued to be binding on the parties even though the
patent was later amended due to the relevant claims not being valid -- analysis of the
Supreme Court's decision -- potential practical repercussions.
Subject: Patent infringement--case law--United Kingdom
Subject: Patent litigation--United Kingdom
SNIPER No.: 2013/01898
Author: Agrawal, Unnati
Title: Key cases: developments in India
Source: World Intellectual Property Review. May-June 2013, p. 94.
Summary: Novartis AG v Union of India, Supreme Court of India -- confirmed the
finding of the Intellectual Property Appellate Board (IPAB) and the Indian Patent office -rejected the patent application filed by Novartis for Glivec -- main ground for appeal was
under a section of the Patents Act, seeking to prevent 'evergreening' by refusing to
grant patent for new forms of known substances -- only exception is if the new form
results in demonstrable increased efficacy -- defining the scope of 'efficacy' and 'known
substance' is imperative -- Maharashtra Hybrid Seeds v UOI, High Court of Delhi -- main
issue for determination before the court was whether the registrar had the power to
condone a delay in the filing of an opposition.
Subject: Patents--case law--India
Subject: Plant breeder's rights--case law--India
SNIPER No.: 2013/01456
Author: Bernardeau-Paupe, Olivia
Title: Land ownership is no excuse for fraudulent trade mark filing
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 7, July 2013, pp.
501-502.
Summary: La Forge de Belleville v City of Paris, French Supreme Court, decision No.
11-21334, 6 November 2012 -- French trade mark application by the City of Paris, for
LA FORGE DE BELLEVILLE to designate various services, including entertainment and
the organization of exhibitions and cultural activities -- prior use of the mark by an
association of artists and the inhabitants of Belleville -- French Cour de Cassation
(Supreme Court) -- delimits the boundaries of trade mark ownership, which cannot be
justified merely by land ownership -- French Supreme Court placed the interests of the
association La Forge de Belleville at a level above those of the land owner.
Subject: Trade mark ownership--case law--France
SNIPER No.: 2013/02186
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Author: Jewell, Catherine
Title: Landmark treaty opens doors for the visually impaired
Source: WIPO Magazine. No. 4, August 2013, pp. 2-4.
Summary: WIPO's 186 member states adopted the Marrakesh Treaty to Facilitate
Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise
Print Disabled -- boost access to literature, entertainment and learning for blind, visually
impaired and print disable people around the world -- alleviate the book famine -copyright limitations and exceptions -- WIPO's stakeholders' platform for visually
impaired persons -- WIPO Diplomatic Conference -- World Blind Union -- Enabling
Technologies Framework (ETF) -- capacity building.
Subject: World Intellectual Property Organization
Subject: Copyright--treaties
Subject: Fair use (Copyright)
SNIPER No.: 2013/02005
Author: Liang, Tian
Title: The Large Aperture Optical Elements patent search system based on Domain
Knowledge Organization System
Source: World Patent Information. Vol. 35 No. 3, September 2013, pp. 209-213.
Summary: Patent knowledge system design -- research on using an open-source
extraction tool, General architecture for text engineering (GATE) and word split
software, from the Institute of Computing Technology and Chinese lexical analysis
system (ICTCLAS) -- assist searchers in acquiring and marking of feature word groups
from the abstracts and claims of the patents on Large Aperture Optical Elements -- used
the experts feature word groups, which were formalized by INSPEC control words, to
construct a Domain Knowledge Organization System (DKOS) -- a retrieval module of
patent information is constructed based on the DKOS -- has practical significance for
designers to design products and develop new technology -- the system is a visual
application system -- can filter patent documents by topics and retrieve relevant topics
via sample text.
Subject: Patent databases
Subject: Patent searching
SNIPER No.: 2013/01892
Author: Gao, Xiang
Title: Latest amendments to PRC's trademark law
Source: World Intellectual Property Review. May-June 2013, p. 88.
Summary: Legal Work Committee of the National People's Congress of People's
Republic of China (PRC) -- published its latest draft of the third amendment to PRC
trade mark law -- major changes -- simplified opposition procedures -- expansion of
non-traditional trade marks -- multi-class application -- letters of examiner's opinion -extension of the time limit to appeal against a refusal of an application or cancellation of
a registration -- well-known marks -- forbidding the copying of an earlier mark of a party
who has commercial ties with the applicant -- punitive damages and increased statutory
punishment -- alleviation of the burden of proof for the rights owner -- non-use demurrer.
Subject: Trade marks--reform--China
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Subject: Trade marks--law and legislation--China
SNIPER No.: 2013/02129
Author: Tiku, Deepa Kachroo
Title: Learning from Novartis: India in the quid pro quo world
Source: Managing Intellectual Property. No. 232, September 2013, pp. 22-24.
Summary: Rejection of Novartis's patent for Glivec raises numerous questions about
patentability in India -- whether incremental innovations will be protected and if so which
kinds -- how to deal with the tension between patent coverage and disclosure -- how to
demonstrate enhanced efficacy -- increased patent standards in India will be a
challenge for Patent Cooperation Treaty (PCT) filers -- patent filers will likely respond by
providing more in-vivo data during prosecution -- may prove to be expensive.
Subject: Patent systems--India
Subject: Patentability--case law--India
SNIPER No.: 2013/02114
Author: Grover, Vikram
Title: Legislation needed on confidentiality in India
Source: Managing Intellectual Property. India IP Focus, 2013, pp. 14-19.
Summary: Important that the obligations, boundaries and responsibilities of employers
and employees are clearly defined -- obligation to maintain confidentiality -- does the
existing legal framework suffice? -- both sides in the relationship have a duty to the
other -- written confidentiality obligations -- Indian courts have been tested on a myriad
of issues -- Supreme Court of India in Superintendence Company of India v Sh Krishan
Murgai -- confidentiality and anti-competition -- Copyright Act and the Designs Act, have
been used to prevent the use of purported confidential information -- trade secrets and
confidential information in other jurisdictions -- jurisprudence surrounding confidentiality
obligations is still in its infancy in India
Subject: Trade secrets--law and legislation--India
Subject: Trade secrets--case law--India
SNIPER No.: 2013/02029
Author: Montanari, Andrea
Title: "Lex Google": copyright law and internet providers: future enemies or allies?
Source: European Intellectual Property Review. Vol. 35 No. 8, 2013, pp. 433-438.
Summary: Lex Google aims to amend the German Copyright Act -- provide for a
number of improvements to the management of copyrighted content by internet service
providers (ISPs) -- could be further modified to cover solely internet content providers
(ICPs) -- contains an amendment in order to allow search engines to display "single
words and very small text excerpts" without having to pay a licence fee -- advantages
and disadvantages linked to the diffusion of copyrighted content over the internet -- role
of ISPs -- different types of internet providers -- distinction between ISPs and ICPs -Lex Google would benefit from taking better into account the e-commerce rules.
Subject: Copyright--law and legislation--Germany
Subject: Carriage service providers--law and legislation
Subject: Electronic commerce
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Subject: Copyright levies--culture and entertainment industry
SNIPER No.: 2013/01463
Author: Montagnon, Rachel
Title: Liability of data providers and enablers for downloading infringing but
undisplayed material
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 7, July 2013, pp.
514-518.
Summary: Football Dataco Ltd and others v Stan James plc and others, Sportradar and
others [2013] EWCA Civ 27, Court of Appeal, England and Wales -- infringement of sui
generis database rights -- Court held that the provision of facilities to download
infringing material on to a user's computer is inevitably a joint act of infringement of sui
generis database right -- even if the material is not displayed -- legal context -subsistence of sui generis database right -- infringement -- joint tortfeasorship -practical significance of the case.
Subject: Database rights--case law--United Kingdom
Subject: Intellectual property infringement
SNIPER No.: 2013/01951
Author: Crowne-Mohammed, Emir Aly
Title: Licence agreement created sufficient standing to bring claim
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 8, August 2013,
pp. 596-598.
Summary: The Federal Court of Appeal held that a licence agreement between
appellant and a Federal Government Agency met the definition of 'exclusive licence' in s
2.7 of the Copyright Act -- Nautical Data International, Inc v C-Map USA Inc -hydrographic charts using data owned by the Crown -- reproduction of data in digital
formats for further licensing or sale -- determining the exclusive licensee under the
Copyright Act -- judgment on the nature of the data -- CHS Data -- CHS Works -significance.
Subject: Crown copyright--case law--Canada
Subject: Copyright infringement--case law--Canada
SNIPER No.: 2013/01947
Author: Romano, Valerio Cosimo
Title: Likelihood of confusion in composite trade marks: a tale of alcoholic deer
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 8, August 2013,
pp. 588-590.
Summary: Likelihood of confusion of a composite trade mark must be examined by
analysing the individual elements of the sign and not merely the sign as a whole -- Mast
Jägermeister Ag v Budapesti Likoripari Kft Buliv and Zwack Unicum Rt -- Articles 12 and
13 of the Italian Industrial Property Code -- novelty and distinctiveness -- theoretically
the overall impression or specific elements of the marks can be examined -- common
use of deer on alcoholic beverages -- many elements form a brand -- other European
cases -- difference between national and European law regarding likelihood of
confusion in composite trade marks.
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Subject: Confusing similarity--case law--Italy
Subject: Trade mark distinctiveness--case law--Italy
Subject: Confusing similarity--Europe
SNIPER No.: 2013/02071
Author: Cook, Charles L.
Title: Litigating the meaning of "prima facie evidence" under the Lanham Act: the fog
and art of war
Source: Trademark Reporter. Vol. 103 No. 2, 2013, pp. 437-486.
Summary: "Burden of proof" and "burden of production" -- rules of engagement -- the
battlefield -- establishing and challenging protectable rights through prima facie
evidence -- resolving the split - the proper meaning of prima facie evidence under the
Lanham Act
Subject: Trade mark litigation--United States
Subject: Trade marks--law and legislation--United States
SNIPER No.: 2013/02031
Author: Guarda, Paolo
Title: Looking for a feasible form of software protection: copyright or patent, is that the
question?
Source: European Intellectual Property Review. Vol. 35 No. 8, 2013, pp. 445-454.
Summary: Analysis of the two main forms of software protection, copyright and patent - description of the protection of software through copyright -- discipline in force in the
European Union -- protect the program code and the functions that enable the computer
to perform its task -- no protection for elements without such functions -- copyright
protection also covers the preparative design material -- idea-expression not protected
by copyright -- originality requirements could create several problems -- copyright on
software in the United States -- current European scenario in terms of patent protection
-- comparative investigation to determine the characteristic features of the patentability
systems in some jurisdictions -- proposal of a feasible system -- sui generis right.
Subject: Computer-related inventions--law and legislation--Europe
Subject: Copyright owners' rights--information technology industry--Europe
Subject: Copyright--law and legislation--Europe
Subject: Intellectual property rights--information technology industry--Europe
SNIPER No.: 2013/02112
Title: Making the call
Source: Managing Intellectual Property. India IP Focus, 2013, pp. 5-7.
Summary: Interview with Indian Supreme Court Justice, Aftab Alam -- Novartis case -other important intellectual property cases -- preparation either for the hearing or for
drafting of the opinion for the Novartis case -- Indian Intellectual property law -protecting intellectual property and promoting innovation -- the Novartis decision.
Subject: Alam, Aftab--interviews
Subject: Intellectual property industry--interviews--India
SNIPER No.: 2013/01893
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Author: Angeles, Jaime R.
Title: Making the case: IP developments in the Dominican Republic
Source: World Intellectual Property Review. May-June 2013, p. 89.
Summary: Interesting recent cases in the Dominican Republic -- advertiser liability
online -- unfair competition in advertising -- unfair competition with trade marks -descriptive trade marks -- generic use of 'App store' -- World IP Organization selected
the Dominican Republic to help in the formulation of a national intellectual property (IP)
strategy -- main objective would be to improve institutional capacity and better and
efficient use of IP -- several private sectors that depend on heavy use of IP -- strategy
includes IP education in schools -- training for small and medium-sized technological
businesses -- better processes for IP enforcement.
Subject: Intellectual property--case law--Dominican Republic
Subject: Intellectual property management--Dominican Republic
SNIPER No.: 2013/02156
Author: Richardson, Nicholas
Title: Market focus: Latin America
Source: World Trademark Review. No. 45, October-November 2013, pp. 10-11.
Summary: Tremendous economic development in Latin America -- marked
acceleration in trade mark related activity throughout the region -- increased foreign
investment -- fuelled by the modernisation of intellectual property (IP) systems -heightened awareness of the importance of IP protection among local companies -- best
external legal counsel available -- Brazil, Columbia, Chile, Argentina and Venezuela.
Subject: Intellectual property industry--Latin America
Subject: Trade marks--Latin America
SNIPER No.: 2013/02001
Author: Geyer, Peter
Title: Markush structure searching by information technology professionals in the
chemical industry: our views and expectations
Source: World Patent Information. Vol. 35 No. 3 September 2013, pp. 178-182.
Summary: Markush structures -- special representation of the chemical compounds
covered in patent documents -- more difficult to index and search than specific chemical
structures -- require special indexing and search features to make them searchable -current state of Markush indexing and search systems -- not enhanced since developed
in the 1960s to 1980s -- uncertain future -- index unique information describing the
chemistry protected by patent claims -- necessary and indispensable information source
for patent information professionals in the chemical industry -- support important
business processes in chemical companies -- clear need to keep providing and
developing such systems in the future.
Subject: Patent searching
Subject: Patent databases
SNIPER No.: 2013/02163
Author: Pett, Christopher
Title: Measuring the boundaries of protection
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Source: World Trademark Review. No. 45, October-November 2013, pp. 50-51.
Summary: Courts in the European Union preoccupied with appeals regarding threedimensional and colour marks -- registration of any sign capable of being represented
graphically -- provided it is capable of distinguishing the goods of one undertaking from
those of another -- Bottega Veneta applied to register handbag styles -- Office for
Harmonisation in the Internal Market (OHIM) rejected the applications -- nothing
distinctive or particularly unusual about the shape of each bag as shown -- appeals -United Kingdom High Court decision relating to Mattel's 3-D 'Scrabble tile' UK trade
mark registration -- recent Louboutin red-soled shoe cases in France and the United
States -- Cadbury and Nestlé cases.
Subject: Non-traditional marks--case law--Europe
Subject: Trade mark owners' rights
SNIPER No.: 2013/02115
Author: Ramanujan, Adarsh
Title: Methods in enabling access to medicines
Source: Managing Intellectual Property. India IP Focus, 2013, pp. 20-24.
Summary: Drug price control -- method enabling access to cheap and good quality
medicines -- drugs are recognised as one of the "essential commodities" under the
1955 Essential Commodities Act -- legal regime seeks to facilitate access to affordable
medicines for the public -- National Pharmaceutical Pricing Policy 2012 (NPPP) finalised
-- the Drug Price Control Order (DPCO) -- enables the Central Government to control
the prices of drug formulations listed in the National List of Essential Medicines (NLEM)
-- provisions for monitoring the prices of other formulations -- prices of drugs in other
countries -- how to regulate pricing of patented drugs -- significance of price control -accepting the Indian way.
Subject: Pharmaceuticals--India
Subject: Prices--pharmaceutical industry--India
SNIPER No.: 2013/02190
Author: Ong, Andrew Michael
Title: Mining innovation: the Filipino way
Source: WIPO Magazine. No. 4, August 2013, pp. 14-16.
Summary: Philippines one of the fastest growing economies of the world -- maximising
the benefits of patent information -- improving IP awareness a priority -- consistently low
number of patent applications -- promotion of the strategic importance of IP -- digital
technologies opening doors to patent information -- catalysing IP creation -- challenges - franchising a path to financial viability -- Intellectual Property Office of the Philippines
(IPOPHL) refocussing its activities.
Subject: Intellectual property systems--Philippines
Subject: Value of intellectual property--Philippines
SNIPER No.: 2013/01455
Author: Clark, Birgit
Title: Most(ly) pralines: Bundesgerichtshof further clarifies its guidance on keyword
advertising
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Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 7, July 2013, pp.
499-501.
Summary: German Federal Court of Justice (Bundesgerichtshof), IZR 217/10, 13
December 2012 ('MOST-Pralinen') -- confirming its precedent in Bananabay II Court
held that booking a competitor's trade mark as an advertising keyword did not amount to
trade mark infringement, provided the ad contained no reference to the trade mark
owner or its products, was visually separated from the natural search results and the
'display-URL’shown in the ad pointed to a website that was not that of the trade mark
owner -- display ads via Google AdWords -- used the generic term 'Pralinen' (German
for 'pralines') as a keyword, using the default keyword option 'broad match' -- decision in
MOST-Pralinen shows the CJEU's guidance in this field of the law -- increasingly lead to
different interpretations from the various national courts -- Bundesgerichtshof's
consistent application of the law provides a welcome degree of legal certainty for
keyword advertisers in Germany.
Subject: Trade mark infringement--case law--Germany
Subject: Electronic commerce
Subject: Keyword advertising--Germany
SNIPER No.: 2013/02092
Author: Bakhtiari, Sasan
Added author: Fondazione Eni Enrico Mattei
Title: Multiproduct multinationals and the quality of innovation
Source: FEEM Nota di Lavoro, no.69. 2013.
Summary: Role of product scope on the innovation activity of multinational multiproduct firms -- patent citation data used to break down innovation into two types -measuring the degree to which innovation performed by firms is fundamental -- extent to
which the output of the R&D can be spread across different product lines -- two features
in multinational production -- fundamental innovation geographically more difficult to
transfer abroad to foreign production sites -- learning spillovers can occur from
international operations -- a more diversified portfolio of products increases a firm's
scope of learning from international operations -- enhancing its ability to engage in more
fundamental research.
Subject: Large scale enterprises
Subject: Innovation (Technological)--management
SNIPER No.: 2013/01904
Author: Burbea, Iulia
Title: Naming medicinal trademarks
Source: World Intellectual Property Review. May-June 2013, p. 101.
Summary: Even if the trade name of a medicine is registered as a trade mark, it may
not be used unless a marketing authorisation issued by the National Agency for
Medicines and Medical Devices (ANM) is obtained -- or an authorisation issued under
the centralised procedure -- choosing the trade name of a medicine -- European
Medicines Agency Guideline -- outlines basic principles -- clear criteria are set for
checking the potential likelihood of confusion -- obtaining of marketing authorisation
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does not automatically entail the admission for registration of that name as a trade mark
-- choosing a suggestive name as a trade mark.
Subject: Pharmaceuticals--Romania
Subject: Trade mark registration--Romania
SNIPER No.: 2013/02074
Author: Suzuki, Yasuhiro H.
Title: Navigating the "land of harmony" and finding "harmonization" for foreign
trademark applicants and owners: a Japanese practitioner's perspective
Source: Trademark Reporter. Vol. 103 No. 2, 2013, pp. 519-566.
Summary: Issues foreign trade mark owners and applicants may encounter when
registering and protecting their marks using the Japanese system -- revisions to the
Trade Mark Act since the 1990s and anticipated movements in the coming years -adoption of marks - proper identification of a word mark in Latin or Japanese characters
-- search considerations -- similarity of trade marks -- similarity of goods or services -application of the "similar grouping system" standards -- trade mark prosecution -- trade
mark enforcement
Subject: Trade mark applications--Japan
Subject: Trade mark registration--Japan
Subject: Trade marks--law and legislation--Japan
Subject: Trade mark systems--Japan
SNIPER No.: 2013/02098
Author: Ricketson, Sam
Title: The new Copyright Act 1997
Source: Intellectual Property Forum. No. 29, May 1997, pp. 14-23.
Summary: Introduction to the Copyright Act, introduced 1997 -- origins of the two
Copyright Acts -- the 1996 Act -- features of the 1997 Act -- exclusive rights -involvement of Sam Ricketson and Jim Lahore in drafting a report to review the
Copyright Act.
Subject: Copyright--law and legislation--Australia
Subject: Copyright ownership--Australia
SNIPER No.: 2013/01601
Author: Moon, Ken
Title: New Zealand: software copyright and trade secrets: High Court judgment in
Fisher & Paykel Finance v Karum
Source: European Intellectual Property Review. Vol. 35 No. 5, 2013, pp. 297-300.
Summary: Software processing logic and business rules not protected by copyright in
New Zealand -- breach of confidence -- source code licence -- Fisher & Paykel Finance
v Karum judgment -- copyright infringement related to "processing logic" not program
code -- acknowledgments contained in the software licence.
Subject: Copyright infringement--case law--New Zealand
Subject: Copyright licensing--information technology industry
Subject: Trade secrets--case law--New Zealand
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SNIPER No.: 2013/02157
Author: Clover, Sara-Jayne
Title: Nike: the brand of champions
Source: World Trademark Review. No. 45, October-November 2013, pp. 13-15.
Summary: Assistant general counsel trade marks Jaime Lemons -- difficulties of
working on a global basis -- constant revision of brand protection strategy -- reflect the
needs of the business and explore creative alternatives to the traditional methods of
defence -- trade dress protection secured for the Air Force I trainer -- special vigilance is
needed in the borderless online marketplace -- collaborative, industry-wide approach is
the smartest way to meet these challenges head-on -- seamless cooperation between
the trade mark and marketing functions is essential in advertising -- sponsoring sports
superstars -- brand ambassadors embroiled in scandals.
Subject: Brand management
Subject: Personality rights
SNIPER No.: 2013/02087
Author: Kandestin, David
Title: Nintendo power: innovation through collaboration and coercion in the video game
industry
Source: Australian Intellectual Property Journal. Vol. 23 No. 4, August 2013, pp. 252266.
Summary: Examination of patents and innovation in the video game industry -- focus
on Nintendo's strategy to obtain market dominance -- history of Nintendo's rise and fall
and recovery -- argument that the strength of Nintendo's patents (especially the famous
10NES patent) was an insignificant contributor to Nintendo's success in the 1980s and
early 1990s -- importance of other factors, particularly the control of complementary
assets such as video game software, as being the key drivers of Nintendo's successful
strategy -- article corrects overly-simplistic accounts of the relationship between strong
patents and innovation -- broader view of business and economic practices reveals a
more complex understanding of the role of intellectual property rights in promoting
innovation and creativity.
Subject: Intellectual property management--culture and entertainment industry
Subject: Innovation (Technological)--culture and entertainment industry
SNIPER No.: 2013/01470
Author: Reddemann, Marie Charlotte
Title: No escape from being sued abroad
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 7, July 2013, p.
566.
Summary: BVerfG, 2 BvR 2805/12, 9 January 2013 -- German Federal Constitutional
Court (BVerfG) decided on the lawful service of a writ for damages and punitive
damages -- German Company was to be sued before a court in the United States of
America -- the service of a writ for damages unknown to the German legal system does
not constitute per se a violation of the rule of law -- German companies with business
links to the United States must be aware of the implications of this judgment -- they can
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advisable for companies with business links abroad to consider potential claims under
the individual jurisdictions that they may face, prior to entering into any business
relationship.
Subject: Trade mark owners' rights--Germany
Subject: Trade mark owners' rights--United States
Subject: Legal jurisdiction
SNIPER No.: 2013/02128
Author: Evans, Huw
Title: No longer guilty if proved innocent
Source: Managing Intellectual Property. No. 232, September 2013, pp. 18-21.
Summary: United Kingdom Supreme Court overturned the Court of Appeal's decision in
Virgin Atlantic v Zodiac Seats -- an infringer should not be liable to pay damages for
infringing patent claims that were subsequently found invalid -- ruling affected damages
estimated at 49 million pounds -- overturned a long-standing principle (Unilin point) in
English patent law -- if a patent is invalidated or amended, including at the European
Patent Office (EPO), defendants will not be liable for damages yet to be paid as they will
be regarded as never having infringed -- may lead to defendants trying new validity
attacks -- decision called for the revision of the courts' practice on granting stays
pending EPO proceedings -- will affect speed of litigation -- raises questions about how
concurrent proceedings will be handled in the new Unified Patent Court.
Subject: Damages--United Kingdom
Subject: Patents--case law--United Kingdom
SNIPER No.: 2013/01469
Author: Leber, Thomas M.
Title: Novelty of selection inventions: case law on 'narrow', 'sufficiency far removed'
and 'purposive selection'
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 7, July 2013, pp.
561-565.
Summary: Guidelines for examination in the European Patent Office (EPO) -assessment of novelty of a claim referring to a numerical range that falls within a
broader numerical range disclosed in the prior art -- the topic of numerous decisions by
the Boards of Appeal -- 'Spiro compounds' -- case law referring to T198/84 and/or
T279/89 case law led to the formulation of the 'narrow', 'sufficiently far removed' and
'purposive selection' criteria to be applied in this context -- determine whether and to
what extent these criteria can be derived from the European Patent Convention (EPC) -hypothesis that these criteria may possibly have no clear basis in the EPC -- novelty
under the EPC.
Subject: European Patent Convention (1973 October 5)
Subject: Patent novelty--Europe
Subject: Patent examination--Europe
SNIPER No.: 2013/02159
Author: Maier, Paul, 1958Title: Observations from the Observatory
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Source: World Trademark Review. No. 45, October-November 2013, pp. 38-39.
Summary: European Union (EU) Observatory on Infringements of Intellectual Property
Rights -- transferred to Office of Harmonization for the Internal Market (OHIM) -- OHIM
in conjunction with the European Patent Office -- assess the importance of intellectual
property intensive industry on economic performance in the European Union -- public
awareness study -- what people in the EU think about intellectual property -- whether
their views vary depending on where they live, what they do for a living or how old they
are -- OHIM is finalising enforcement tools -- Enforcement Database -- online repository
for statistical reporting and analysis of infringement data -- other enforcement work -copyright work -- launch of the observatory's new website.
Subject: Office for Harmonization in the Internal Market (Trade Marks and Designs)-reviews
Subject: Intellectual property enforcement
SNIPER No.: 2013/00786
Author: Zhang, Anna
Title: Oh yes!: it's free: creative rights for tomorrow
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 1, December 2012January 2013, pp. 11-16.
Summary: Discussion with lawyers, scholars and entrepreneurs -- where copyright
legislation is heading -- how business are changing in the era of the Internet -- the
digital era and high quality reproduction -- copyright infringement -- difficulties of
enforcement -- piracy -- copyright law as an incentive solution -- copyright as a state
granted monopoly -- taking into account the public interest -- need for global copyright
laws to be updated -- dealing with the flood of copyright infringement -- new business
models -- licensing -- internet has changed the way content is distributed -- combination
of free basic service and paid value-added service
Subject: Copyright--reform
Subject: Electronic copyright--reform
SNIPER No.: 2013/02158
Author: Little, Trevor
Title: OHIM users have their say on a year of change in European trademarks
Source: World Trademark Review. No. 45, October-November 2013, pp. 18-36.
Summary: Office for Harmonisation in the Internal Market (OHIM) -- tools are central to
OHIM's current mission and to its future expansion -- tools designed to develop and
streamline OHIM's trade mark offerings -- assessment of OHIM's new tools, TMclass
and TMview -- for users the primary concern is that the offerings available support
maintaining the Community trademark (CTM) register -- OHIM's performance in key
areas -- OHIM's performance in terms of CTM opposition actions -- mediation as an
alternative to appealing trade mark and design decisions to the Boards of Appeal -oversight of the European Observatory on Infringements of Intellectual Property Rights - genuine use of a CTM -- treatment of class headings -- IP Translator case -- plans to
amend the EU Community Trademark Regulation -- recast the EU Trademarks Directive
and overhaul the filing fees regime.
Subject: Trade marks--reform--Europe
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Subject: Trade marks--statistics--Europe
SNIPER No.: 2013/02065
Title: "Olympic Law and the IP effect" by Dr Mark James and Professor Guy Osborn: a
response from Alex Kelham
Source: Intellectual Property Quarterly. No. 3, 2013, pp. 275-277.
General Note: Second article in a series of two. See also: 2013/01381
Summary: Article entitled "Guilty by Association: Olympic Law and the IP Effect" -- Dr
Mark James and Professor Guy Osborn discussed the legislative powers created for the
protection of intellectual property rights during the London 2012 Olympic and
Paralympic Games (London 2012 Games) -- examined the legislation in the context of
what the authors characterise as a development towards new forms of intellectual
property protection expanding beyond the traditional intellectual property remit and
driven primarily by private entities -- challenges a number of significant factual
inaccuracies in the article, particularly in reference to the London 2012 Games.
Subject: Ambush marketing
Subject: Olympic insignia
SNIPER No.: 2013/02069
Author: Laub, Christoph
Title: On legal validity: using the work of patent courts for quality management: the
statistical reutilization of patent court appeal decisions.
Source: Journal of World Intellectual Property. Vol. 16 No. 3-4, July 2013, pp. 168-188.
Summary: A way to provide objective and cost-efficient metrics for the work of patent
offices and patent attorney professionals -- key conclusions.
Subject: Intellectual property offices
Subject: Quality management--intellectual property industry
SNIPER No.: 2013/01881
Author: Gosain, Rana
Title: On the right track: the INPI ups its game
Source: World Intellectual Property Review. May-June 2013, pp. 56-57.
Summary: Brazilian patent and trademark office (INPI) -- increase in patent approvals - backlog has not decreased -- new examiners -- implementing electronic filings -encouraging applicants to withdraw or abandon old applications and replace them with
recently filed ones that are deemed important in commercial terms -- efforts to
streamline examination and administrative proceedings -- National Health Surveillance
Agency (ANVISA) and pharmaceutical patents -- plans to boost national industrialisation
in Brazil.
Subject: Intellectual property offices--Brazil
Subject: Patent systems--reform--Brazil
SNIPER No.: 2013/01457
Author: Banerjee, Arpan
Title: Online uploads by the Trade Marks Registry: India High Court rejects
constructive notice approach
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Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 7, July 2013, pp.
502-504.
Summary: Institute of Cost Accountants of India v Registrar of Trade Marks, Bombay
High Court, 2013 Indlaw MUM 145, 1 March 2013 -- Bombay High Court rules on the
meaning of the expression 'date of communication' in the context of receiving
examination reports from the Indian Trade Marks Registry (TMR) -- length of time to
register a trade mark due to backlog and staff shortages at the TMR -- dates used in
Examination Report (ER) stated as 'within one month of communication' in Indian Trade
Mark Rules -- discrepancy over the date used in postal application or date uploaded to
an online record of the application -- decision could have implications in the context of
other trade mark proceedings dependent on correspondence from the TMR -- is
'communication' the same as the term 'receipt' in this context -- recommends the TMR
uses email to correspond with trade mark agents instead of post.
Subject: Trade mark applications--India
Subject: Trade mark registration--India
Subject: Trade mark processing--India
SNIPER No.: 2013/02086
Author: Scardamaglia, Amanda
Title: Opening up the Australian archives on colonial trade mark registrations
Source: Australian Intellectual Property Journal. Vol. 23 No. 4, August 2013, pp. 222251.
Summary: Historical trade mark registration data largely neglected -- important for
business historians -- some recent international research that considers historical trade
mark registrations -- Australian research -- reviewed a sample of the colonial trade mark
registers sourced from the National Archives of Australia -- identified trends and key
themes emerging during this time -- overview of the trade marks registered under the
regime -- looked specifically at the colonial trade mark registration data -- explored
themes -- trade mark intensity: measure of the number of trade mark registrations for a
particular class of goods over a given period -- globalisation of marking: who was using
the colonial trade mark regime -- types of trade marks being registered -- pattern of
trade marking image based marks -- general observations on registration -- defensive
registration practices of some applicants under regime -- longevity of some of the
colonial trade marks
Subject: Trade marks--history--Australia
Subject: Trade marks--trends--Australia
SNIPER No.: 2013/02103
Author: Pearce, D. C. (Dennis Charles)
Title: Opinion: is Australia, or should Australia, be a world leader in copyright law?
Source: Intellectual Property Forum. No. 30, August 1997, pp. 6-11.
General Note: Title of article supplied by contents page.
Summary: Review of the law of copyright has become a continuing process in Australia
-- constrained by a number of factors -- international conventions -- equal treatment for
overseas works -- organisation of the copyright industry -- Copyright Law Review
Committee (CLRC) -- right of compensation only – re-categorisation of subject matter
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and rights -- simplification of exceptions -- Ricketson-Lahore Copyright Act -- world
leadership is not as significant as providing a Copyright Act suited to Australia's needs.
Subject: Copyright--law and legislation--Australia
Subject: Copyright--reform--Australia
SNIPER No.: 2013/01894
Author: Holme, Marianne
Title: Opposing a European patent after expiry of the opposition period
Source: World Intellectual Property Review. May-June 2013, p. 90.
Summary: Possible to oppose a granted European patent even after expiry of the
opposition period -- important that the intervention is filed in accordance with the
Implementing Regulations of the European Patent Convention (EPC) -- form and
content of the notice of intervention -- filing intervention opposition -- withdrawal of
appeal -- possibility of intervening in opposition proceedings offers the alleged infringer
a centralised procedure for potential revocation of an already opposed European patent
in question -- if no opposition is pending the alleged infringer may be left with timeconsuming and expensive national proceedings -- the situation when the Unitary Patent
comes into force.
Subject: Patent opposition--Europe
Subject: Patent systems--Europe
SNIPER No.: 2013/02043
Author: Barazza, Stefano
Title: Out-of-time requests and likelihood of confusion between marks containing
foreign names
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 9, September
2013, pp. 669-672.
Summary: General Court of the European Union rules that an applicant's requests
were out of time and confirms that there was a likelihood of confusion between an
earlier national mark and his Community trade mark -- David Mayer Naman v OHIM,
Daniel & Mayer Srl -- requests under Articles 54(2) (acquiescence) and 57(2) and (3)
(proof of genuine use) of the Community Trade Mark Regulation (CTMR) -- Classes 18
and 25 of the Nice Agreement -- Community trade mark 'David Mayer' -- DANIEL &
MAYER MADE IN ITALY -- earlier decisions -- analysis of alleged violation of Articles -analysis of likelihood of confusion -- visual, phonetic and conceptual differences -likelihood of confusion higher with respect to foreign names -- importance of timeliness
and providing required evidence.
Subject: Confusing similarity--case law--Europe
Subject: Trade mark validity--case law--Europe
SNIPER No.: 2013/02046
Author: Rajasingh, Betsy Vinolia
Title: Parallel import of trade marked goods is legal in India, says Delhi High Court
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 9, September
2013, pp. 676-678.
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Summary: Delhi High Court has legalized the parallel importation of trade mark goods
into India by its reading of Indian trade mark law -- Kapil Wadhwa and others v
Samsung Electronics Co Ltd and another -- the position on the principle of national or
international exhaustion is not clear in Section 30(3) of the Indian Trade Marks Act 1999
-- importation of Samsung printers from China for sale in India without trade mark
owners authorization -- whether the Act demonstrates the principle of national or
international exhaustion -- High Court finding reverses earlier decision -- analysis -benefits and downside to parallel importation -- case is now on appeal to the Supreme
Court.
Subject: Trade mark exhaustion--case law--India
Subject: Parallel importing--case law--India
SNIPER No.: 2013/02140
Author: Aoshima, Emi
Title: Parody trademark case
Source: Yuasa and Hara Intellectual Property News. Vol. 38, September 2013, pp. 1-7.
Summary: Hokkaido Design v Puma SE -- similarity of KUMA and PUMA marks -plaintiff's mark depicts a bear -- likelihood of confusion in consumers -- both cover
clothing goods -- phrase that the plaintiff's mark "is a parody" used on website -- other
trade mark applications filed by plaintiff include designs featuring a pig or a horse -KUMA mark found to imitate the PUMA trade mark with the intent to profit from the
reputation, goodwill and trust of the PUMA mark -- "SHI-SA" v PUMA -- mark with
Okinawa traditional lion figure -- in this case no confusion was found to be likely
between the marks -- parodies of Adidas and Nike marks
Subject: Trade marks--case law--Japan
Subject: Fair use (Trade marks)
Subject: Confusing similarity
Subject: Famous trade marks
SNIPER No.: 2013/01909
Author: Sutton, Paul J., 1939Title: Patent declaratory judgment actions
Source: World Intellectual Property Review. May-June 2013, p. 106.
Summary: Common for patent litigation in the United States to commence in the form
of a declaratory judgment (DJ) action -- a party seeks a judicial determination regarding
the legal positions of the parties -- result will be a legally binding adjudication that is
preventive in nature -- relief available by bringing a DJ action is based upon statute, as
opposed to equity -- characterised by the synonymous terms declaratory relief and
declaratory ruling -- strategic benefits associated with being a DJ plaintiff.
Subject: Patent litigation--United States
Subject: Patents--law and legislation--United States
SNIPER No.: 2013/01906
Author: Coertzen, Mitzi
Title: Patent or trade secret?
Source: World Intellectual Property Review. May-June 2013, p. 103.
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Summary: The decision to patent an invention or keep it a trade secret -- patent
protection -- in South Africa a patent is granted for 20 years -- a patent is enforceable
against any third party -- keeping a trade secret is done on a contractual basis -- if a
trade secret is discovered legitimately it would be unenforceable against parties using
the trade secret's subject matter -- Agreement on Trade-Related Aspects of Intellectual
Property Rights Agreement (TRIPS) deals with protecting undisclosed information -sets out three requirements that undisclosed information should meet in order to
prevent the information from being disclosed, acquired or used by others dishonestly -legal requirements of novelty and inventiveness that an invention has to meet in order to
be patentable are stricter -- person or company faces a substantial risk in keeping a
trade secret -- time consuming and cumbersome process for claiming damages from a
person disclosing confidential information -- financial considerations in deciding
between patenting and keeping a trade secret.
Subject: Trade secrets--South Africa
Subject: Patent rights--South Africa
SNIPER No.: 2013/01991
Author: May, Toby
Title: Patent prosecution highway in China
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of
Patent Agents. Vol. 42 No. 7, July 2013, pp. 388-390.
Summary: Patent prosecution highway (PPH) -- underlying principle to share
examination results among various offices in order to speed up patent prosecution -pilot phase -- basic requirements on Chinese application filing for PPH requests -countries signed up for the PPH pilot programme in China -- Japan -- United States -Germany -- South Korea -- Russia -- Denmark -- Finland -- PCT PPH -- normal or nonPCT PPH -- PPH is applicable to divisionals -- materials needed for a PPH request in
China -- effect of the PPH request -- exceptions -- patent offices operating in English are
encouraged to join the PPH programme in China -- United Kingdom's IPO, the
European Intellectual Property Office (EPO), the Canadian Intellectual Property Office
and IP Australia -- allowing more applicants to benefit from the mechanism.
Subject: Patent examination--procedure--China
Subject: Patent processing--procedure--China
Subject: International patent applications
SNIPER No.: 2013/02075
Author: Lau, Calvin
Title: Patentability of genetic material: where does it stand today?
Source: Australian Intellectual Property Law Bulletin. Vol. 26 No. 3, September 2013,
pp. 54-57.
Summary: Federal Court of Australia held isolated human genes are patentable while
the United States Supreme Court held they are not patentable -- whether human genes
are patentable -- Australian position: Cancer Voices Australia v Myriad Genetics Inc -US position: Association for Molecular Pathology v Myriad Genetics -- whether human
genes should be patentable -- release of reports by the Centre for International
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Economics (CIE) and Productivity Commission -- compulsory licensing and Crown use
of human gene patents -- future of human gene patents in Australia
Subject: Genes--patentability
Subject: Patenting of life forms
Subject: Patentability--case law--Australia
Subject: Patentability--case law--United States
SNIPER No.: 2013/02067
Author: Bostyn, Sven J. R.
Title: Patentability of plants: at the crossroads between monopolizing nature and
protecting technological innovation?
Source: Journal of World Intellectual Property. Vol. 16 No. 3-4, July 2013, pp. 105-149.
Summary: Issues regarding the patentability of plants -- no public interest overarching
principle present in the European Patent Convention or any other convention which
would exclude patent protection for plants -- some users of the patent system seeking to
obtain patent protection for methods and products which are akin to traditional breeding
methods -- needs to be halted -- patent applications in that context deserve very close
scrutiny -- hybrid seeds ought not to be protected by patents -- they in effect protect
plant varieties -- if the patent system is not capable of keeping such innovations outside
of the patent territory -- the call for excluding all plant-related innovations from
patentability will become more influential -- products produced by essentially biological
processes should not be patentable -- current legal framework does not allow the
judiciary to come to such conclusion -- introducing a breeders' exemption in the patent
system.
Subject: Plant breeder's rights--patentability
SNIPER No.: 2013/02104
Author: McKeough, Jill
Title: Patenting genetic material: what are people concerned about?
Source: Intellectual Property Forum. No. 30, August 1997, pp. 12-17.
Summary: Critics suggest that genetic material may be unsuitable subject matter for
patenting -- lack of novelty, lack of inventive step -- broader ethical and moral issues -Human Genome Project -- Human Genome Diversity Project -- indigenous
communities, Green lobbyists and some researchers argue that intellectual property
laws should be harmonised with environmental and human rights principles -- protect
the interests of all concerned.
Subject: Genes--patentability--Australia
Subject: Patenting of life forms—Australia
SNIPER No.: 2013/01471
Title: Patenting neural precursor cells obtained from human embryonic stem cells:
Neural Precursor Cells II: Bundesgerichtshof (German Federal Court of Justice)
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 7 July, 2013, pp.
514-518.
Summary: Stem cell research -- Decision of 27 November 2012, Case No. X ZR 58/07
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unrestricted patenting of precursor cells obtained from human embryonic stem cells -Patent guidelines does not preclude patenting in the above constellation if the patent
claim is limited such that it does not include precursor cells from human embryonic stem
cells the harvesting of which involved the destruction of embryos -- court therefore sees
no reason to refer further questions to the CJEU in order to obtain an explicit response
to the questions raised by the defendant in connection with Article 27 TRIPS.
Subject: Research on life forms--case law--Germany
Subject: Patenting of life forms--case law--Germany
SNIPER No.: 2013/02009
Author: Ida Madieha bt. Abdul Ghani Azmi
Title: Patents and the practice of open science among government institutes in
Malaysia: the case of Malaysian Rubber Board
Source: World Patent Information. Vol. 35 No. 3, September 2013, pp. 235-242.
Summary: Examines the central concerns surrounding open science in Government
Research Institutes (GRIs) in relation to the output of R &D funded by the Malaysian
government -- explores the patent practice of the Malaysian Research Board (MRB) as
a case study -- MRB is chosen specifically as it is one of the oldest GRIs and the
pioneer in patenting in Malaysia -- issues dealt with in this paper -- how does the Board
balance its role in conducting research for the good of the society as opposed to
claiming proprietary rights? -- how does the Board diffuse the R & D results to the smallscale farmers? -- what are the modes of commercialisation adopted by them? -- a
balance between open science and patents must be maintained by the MRB in order to
move the economy up the value chain.
Subject: Science and research industry--Malaysia
Subject: Intellectual property management--Malaysia
SNIPER No.: 2013/02062
Author: Booton, David
Title: Patents for diagnostic tools: an economic analysis
Source: Intellectual Property Quarterly. No. 3, 2013, pp. 187-213.
Summary: Impact that gene patents have on the availability and development of
diagnostic tests -- two post-grant legal mechanisms are explored using an economic
analysis -- an exemption to infringement which would allow the carrying out of
diagnostic tests -- that patent owners be compelled to license diagnostic uses of a
claimed invention if they refuse reasonable requests to supply a diagnostic test -existing post-grant mechanisms for tempering patent rights could not be improved so as
to enhance research into the diagnosis and treatment of gene-based disease.
Subject: Experimental use (Patents)
Subject: Scientific research
SNIPER No.: 2013/02094
Author: Scotchmer, Suzanne
Title: Patents in the university: priming the pump and crowding out
Source: NBER Working Paper Series. no. 19252, July 2013
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Summary: Effect of Bayh-Dole Act allowing universities to exploit patents on their
federally sponsored research -- university laboratories have two sources of funds: direct
grants from sponsors and income from licensing -- tax credits for private R&D also
contribute -- Bayh-Dole profits are a source of funds -- question arises how subsidies
and Bayh-Dole profits fit together -- argues that subsidies to the university can either
"prime the pump" for spending out of Bayh-Dole funds, or can crowd it out -- if the
sponsor wants to increase university spending beyond the university's own target, it will
end up funding the entire research bill -- recommends a subsidy system that requires
university matching that can mitigate this problem.
Subject: Patents--education and training industry--United States
Subject: Patent licensing--United States
Subject: Industrial research and development--United States
SNIPER No.: 2013/01955
Author: Tessensohn, John A.
Title: Perfetti v Rakuten: A Kyosaku-a wake-up stick against online marketplace
operators
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 8, August 2013,
pp. 624-640.
Summary: Trade mark infringement and the online marketplace -- electronic commerce
in Japan -- anti-counterfeiting in Japan -- Japan Customs and Japan police anticounterfeiting statistics -- counterfeiting survey finds from the Japan Patent Office -Perfetti Van Melle SpA v Rakuten KK -- Intellectual Property High Court of Japan
(IPHCJ) decision -- CHUPA CHUPS lollipop trade mark -- online shopping mall operator
Rakuten KK sued -- small Japanese merchants sold counterfeit items online -- Rakuten
KK when being made aware of the infringement removed the infringing listings -electronic commerce in Japan after the decision -- ISP Liability Limitation Law -- online
counterfeiting in the United States and Europe -- online counterfeiting and China -Perfetti/Rakuten decision regarded as a good compromise of the interests of brand
owners, online marketplace operators and consumers.
Subject: Carriage service providers--liability--Japan
Subject: Trade mark infringement--case law--Japan
Subject: Trade mark infringement
Subject: Electronic commerce
Subject: Counterfeiting
SNIPER No.: 2013/02193
Author: Jewell, Catherine
Title: Perspectives on design
Source: WIPO Magazine. No. 4, August 2013, pp. 24-29.
Summary: WIPO's Innovation Design Forum -- international legal framework to simplify
design registration procedures -- Argentinian designer Adrián Cohan, Indian design
educator Darlie Koshy and South African design activist and founder of Design Indaba
Ravi Naidoo -- policy makers increasingly recognising the key role design plays in
driving economic development -- creative ecosystems boost economic growth -- need
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for stronger university-industry links -- designing solutions to social problems -- advice
for young designers starting out.
Subject: Industrial design rights--developing countries
Subject: Industrial design registration
SNIPER No.: 2013/02126
Added author: Australian Centre for Intellectual Property in Agriculture
Added author: Horticulture Australia
Title: Plant breeder's rights: a guide for horticulture industries
Source: Plant Breeder's Rights: a Guide for Horticulture Industries. April 2008.
General Note: "This booklet was prepared independently by ACIPA with funding from
Horticulture Australia Limited (Project HG04020 'Maximising the Benefits of Intellectual
Property for the Australian Horticulture Industry' 2005-2007, and project HG07051
'Intellectual Property Education and Training for the Australian Horticulture Industries'
2007-2010)". Publication number: HAL/ACIPA 01/08
General Note: Originally published 2005; revised 2006 and 2008.
Summary: Maximising benefits of commercial use of protected plant varieties -- critical
that breeders, growers licensees and others in the horticulture industry understand the
nature of intellectual property -- need to be aware of rights and obligations when using
or purchasing protected plant varieties -- grant of plant breeder's rights (PBR) -- criteria
for protection -- naming a new plant variety -- scope of PBR -- exceptions and limitations
to protection -- commercialising a PBR variety -- payment to use a protected variety -infringement and enforcement -- examples of detailed descriptions of protected varieties
Subject: Plant breeder's rights--Australia
Subject: Intellectual property education--agriculture industry--Australia
SNIPER No.: 2013/02122
Added author: Australian Centre for Intellectual Property in Agriculture
Added author: Horticulture Australia
Title: Plant breeder's rights and patents for plants: a compendium of key case law for
the horticulture industries in Australia
Source: Plant Breeder's Rights and Patents for Plants: a Compendium of Key Case
Law for the Horticulture Industries in Australia. 2007.
General Note: "This booklet was prepared independently by the Australian Centre for
Intellectual Property in Agriculture with funding from Horticulture Australia Limited
(Project HG04020 'Maximising the Benefits of Intellectual Property for the Australian
Horticulture Industry')".
Summary: Designed as a reference for people in the horticulture industries in Australia
who are likely to be involved in commercialisation of plant material and in obtaining IP
protection -- compilation of some key recent cases in Australia and overseas involving
plant breeder's rights and patents for plants --provides guide to the way the Courts are
interpreting various parts of the laws -- issues covered -- constitutionality of PBR -patentability of plant material -- farm-saved seed -- essential derivation -- disclosure and
prior sale -- misrepresentation -- infringement -- evidence -- breach of contract
Subject: Plant breeder's rights--case law--Australia
Subject: Patent rights--case law--Australia
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SNIPER No.: 2013/02194
Author: Frejlich, Czesˆawa
Title: Polish design: a metamorphosis
Source: WIPO Magazine. No. 4, August 2013, pp. 30-32.
Summary: Design in Poland -- growing awareness of the role of design in business -government support -- industrial design applications doubled in Poland in the last ten
years -- recognition of the importance of protecting designers -- until recently, copying a
good foreign product (in a slightly altered form to avoid legal difficulties) was regarded
as a legitimate and effective commercial strategy -- industrial design sector supported
by Polish government -- shifting attitudes -- recently acquired EU funds will be used to
forge closer university-industry links.
Subject: Industrial designs--Poland
SNIPER No.: 2013/02120
Author: Sanderson, Jay
Added author: Australian Centre for Intellectual Property in Agriculture
Added author: Horticulture Australia
Title: The potential impact of patents on Australian horticulture industries
Source: The Potential Impact of Patents on Australian Horticulture Industries. 2009.
General Note: "This project was funded by Horticulture Australia Limited (HAL) with
Voluntary Contributions from the Australian Centre for Intellectual Property in
Agriculture (ACIPA) at the University of Queensland, and has HAL Project Number
HG07052". Publication number: HAL/ACIPA 17/09
Summary: Whether plants can be patented in Australia, the United States and Europe - to what extent plant-related innovations can be protected by confidentiality agreements
-- trends in the patenting of plants and plant-related innovations in Australia, the United
States and Europe -- consequences for breeders, researchers and growers of a shift to
patent protection or confidential information -- key messages -- plant related innovations
are generally patentable -- there are important differences between plant breeder's
rights and patents -- no single correct approach -- industries must consider all the
potential consequences of using patents and/or confidential information.
Subject: Patent systems--Australia
Subject: Patentability--agriculture industry--Australia
Subject: Plant rights systems--Australia
Subject: Trade secrets--agriculture industry--Australia
SNIPER No.: 2013/02116
Author: Sriniwas, Deepak
Title: A practical view on patent oppositions in India
Source: Managing Intellectual Property. India IP Focus, 2013, pp. 26-30.
Summary: Yahoo v Controller of Patents and Rediff.com -- reasons the case is
considered a landmark case -- background of the case -- practice at the Indian Patent
Office (IPO) -- public working.
Subject: Patent opposition--case law--India
Subject: Patents--law and legislation--India
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SNIPER No.: 2013/02003
Author: Dannegger, Felix
Title: Predictive accuracy of survey-based forecasts for numbers of filings at the
European Patent Office
Source: World Patent Information. Vol. 35 No. 3, September 2013, pp. 187-200.
Summary: Examination of the predictive accuracy of the forecasts for patent filings
from a sequence of annual surveys of patent applicants at the European Patent Office -extent to which applicants could foresee the effects of the 2008/2009 recession -investigates the possibilities for new methods to calculate forecasts for survey results -found that two and three year predictions were better for worldwide first filings than for
EPO Total filings (sum of European direct and PCT International Phase filings,
excluding divisional filings) -- differences are established between main blocs of
residence of the applicants -- possible benefits of indirect transfer forecasts for total
EPO filings via worldwide first filings, and of indirect forecasts of PCT regional phase
entries from PCT international phase filings -- recession was not well anticipated by the
applicants -- slightly better anticipated in terms of worldwide first filings and PCT
regional phase entries, than for total EPO filings -- combination approach may be
appropriate for future surveys.
Subject: Patent applications--trends--Europe
SNIPER No.: 2013/01989
Author: Lawrence, Malcolm
Title: Priority date assessment under EPC: part 1
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of
Patent Agents. Vol. 42 No. 7, July 2013, pp. 379-386.
General Note: First article in a series of two.
Summary: European Property Office tribunals -- test for attribution of priority -- priority
very relevant to commercial outcomes in Europe -- priority entitlement -- merging IP
risks such as Poisonous Visions and Poisonous Priority -- various priority contexts -2003 to 2012 development of a strict approach -- important philosophical test.
Subject: Patent litigation--Europe
Subject: Regional patents--Europe
SNIPER No.: 2013/02133
Author: Barraclough, Emma
Title: The problems of a bilateral world
Source: Managing Intellectual Property. No. 232, September 2013, pp. 34-40.
Summary: Rapid proliferation of bilateral and regional deals -- each new intellectual
property (IP) related obligation in a free trade deal effectively ratchets up IP norms
internationally -- are free trade agreements (FTAs) good for IP owners? -- benefits -non-violation disputes -- misfit between FTAs and the multilateral process -- difficulties
when implementing FTAs -- problems created by the deal-by-deal negotiating process -backlash against bilateral and regional deals -- transparency concerns -- the future of
FTAs -- Trans-Pacific Partnership (TPP)
Subject: Free trade--treaties
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Subject: Intellectual property rights
SNIPER No.: 2013/02077
Author: Logan, Catherine
Title: Protecting the architecture of happiness using trade marks (with apologies to
Alain de Botton)
Source: Australian Intellectual Property Law Bulletin. Vol. 26 No. 3, September 2013,
pp. 63-68.
Summary: Registration of Apple Store and Microsoft Store layouts as marks -Australian registrations of a city scene and a stylised house as device marks -- why
register the store layout or facade as a trade mark? -- previous trade dress or gestalt
claims in relation to architecture more generally -- case involving the shape of the Rock
and Roll Hall of Fame and Museum building in Cleveland -- how would this case have
been decided in Australia? -- using colour instead of design for trade dress -- BP petrol
yellow and green mark -- Eagle Boys pizza glowing pink mark -- virtual stores
Subject: Trade mark registration
Subject: Trade dress
Subject: Colour marks
SNIPER No.: 2013/01957
Author: Bühling, Jochen, 1961Title: The protection of a product obtained by a patented process under German law
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 8, August 2013,
pp. 651-654.
Summary: Patent protection in Germany -- section 9 of the German Patent Act -protection of product patents and process patents -- BGH Case X ZR 33/10 (MPEG-2) - patentable processes (methods) -- patent protection to products allowed in certain
circumstances -- determining when a product is directly obtained by a process -- MPEG2 decision -- standard essential patent (SEP) -- method of encoding video data -decoding method for encoded video data -- productions of DVDs and patent
infringement -- exhaustion of rights.
Subject: Patentability--case law--Germany
Subject: Patent infringement--case law--Germany
Subject: Patent exhaustion--case law--Germany
SNIPER No.: 2013/02070
Author: Nyakotyo, Stewart
Title: The protection of geographical indications in Zimbabwe: an overview of the
relevant legislation, institutional framework and mechanisms
Source: Journal of World Intellectual Property. Vol. 16 No. 3-4, July 2013, pp. 189-196.
Summary: Approach taken by Zimbabwe to regulate the use of geographical
indications (GIs) -- Zimbabwe enacted the Geographical Indications Act -- specific legal
and institutional framework for the protection of GIs -- implications of this development -relationship between the law on GIs and other pertinent pieces of legislation such as the
trade mark law -- Zimbabwe is yet to realize any economic benefits from GIs -- in-depth
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study is necessary for the purposes of assessing the costs, benefits and potential
contribution of GIs to the socio-economic development of the country.
Subject: Geographical indicators--Zimbabwe
Subject: Intellectual property law--Zimbabwe
SNIPER No.: 2013/02063
Author: Morgan, Owen, Dr
Title: The public domain or another domain to house Mātauranga Māori?
Source: Intellectual Property Quarterly. No. 3, 2013, pp. 214-233.
Summary: Public domain as an intellectual property construct -- consequences when
trying to implement protection of the cultural assets of indigenous peoples -- issues
were addressed in the 2013/02063
Wai 262 report issued by the Waitangi Tribunal -- although the report relates to a claim
by Māori in respect of Mātauranga Māori it has much wider relevance -- approach taken
by the Waitangi Tribunal -- proposed creation of a new domain to house Mātauranga
Mori.
Subject: Public domain
Subject: Traditional knowledge--New Zealand
Subject: Indigenous issues in intellectual property--New Zealand
SNIPER No.: 2013/02118
Author: Abrol, Cyril
Title: A quest for convergence with Indian competition law
Source: Managing Intellectual Property. India IP Focus, 2013, pp. 38-42.
Summary: Competition and innovation are entwined -- intellectual property (IP) rights
protect individual interest, and reward inventors by granting an exclusive right of
commercial exploitation -- competition laws fundamentally protect the market by
opposing monopolies -- consensus that both present divergent paths for achieving the
same goal -- competition law in India -- tests for reasonability -- reliance on IP laws -jurisdictional overlap -- Competition Commission of India (CCI) holds the key to
understanding the true legislative intent.
Subject: Competition (Economics)--India
Subject: Intellectual property rights--India
SNIPER No.: 2013/01885
Author: Kondrat, Mariusz
Title: The real deal: the concept of genuine use
Source: World Intellectual Property Review. May-June 2013, pp. 70-71.
Summary: Interpretation of a trade mark's genuine use in the Community within the
meaning of Article 15(1) of the Community Trademark Regulation (CTMR) -- subject of
a judgment of the Court of Justice of the European Union (CJEU) in the Onel v Omel
case -- sparked the debate on how to determine a territorially sufficient genuine use of
the CTM, which would satisfy the relevant condition established in Article 15(1) -interpretation remained uncontested for many years -- territorial borders to be
disregarded.
Subject: Trade mark use--case law--Europe
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Subject: Trade mark use--law and legislation--Europe
SNIPER No.: 2013/01468
Author: Elsmore, Matthew J.
Title: Reconfiguring trade mark law
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 7, July 2013, pp.
546-560.
Summary: European trade mark law should be approached in a supplementary way
called reconfiguration -- investigates such a reconfiguration of trade mark law by
exploring the interplay of trade marks and service transactions in the Single Market -cross-border setting, with a particular focus on small business and consumers -reconfiguring the discussion -- Single Market as 'regulatory ecosystem' -- numerical
domination -- product signalling -- other peculiarities of service and trade marks -- crossborder services -- EU trade mark law makes matters worse -- co-existence and
innovation -- proposals to stimulate debate -- point of single contact -- Single Market
test -- evaluating reconfiguration.
Subject: Trade marks--reform--Europe
Subject: Intellectual property systems--Europe
SNIPER No.: 2013/01908
Author: Özdoğan, Işik
Title: Registration of non-traditional trademarks in Turkey
Source: World Intellectual Property Review. May-June 2013, p. 105.
Summary: Turkish Trademark Decree Law no: 556 allows the registration of nontraditional trade marks -- tricky to obtain registration for these types of marks -- sign
accepted as a trade mark as long as the sign can be graphically represented and is
capable of distinguishing an entity's goods or services from those belonging to others -requires as sign to be distinctive -- distinctiveness test for three-dimensional trade
marks -- criteria -- due to the non-traditional features of three-dimensional trade marks,
specific element which benefits from registration differs -- Turkish Patent Institute (TPI)
generally rejects an application for a non-traditional trade mark -- TPI wants applicants
to prove the trade mark's distinctive character.
Subject: Non-traditional marks--Turkey
Subject: Trade mark distinctiveness--Turkey
SNIPER No.: 2013/02132
Author: Shaw, Alastair
Title: The report that could lead to action on lookalikes
Source: Managing Intellectual Property. No. 232, September 2013, pp. 32-33.
Summary: Report issued by the United Kingdom Intellectual Property Office -- new
information about the impact of lookalike products on IP owners and the consumers
who buy them -- surveys suggest shoppers may believe themselves disadvantaged by
buying lookalikes -- weak correlation between a fall in sales of branded products and a
rise in sales of products in lookalike packaging -- difficulties brand owners in the UK
face if they want to bring an action against the makers of lookalike products -- freedom
of UK law makers to change the rules, given that the European Union has set the legal
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framework in this area -- properly constituted private right of action under consumer
protection rules -- would neither make conduct unlawful which was not already unlawful
or open the litigation floodgates.
Subject: Trade dress--statistics--United Kingdom
Subject: Passing-off--case law--United Kingdom
SNIPER No.: 2013/01462
Author: Davey, Francis
Title: Reverse engineering and copyright in programming languages and data file
formats
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 7, July 2013, pp.
512-514.
Summary: SAS Institute Inc v World Programming Limited [2013] EWHC 69 (Ch), High
Court of Justice, England and Wales, 25 January 2013 -- High Court expressed the
provisional view that computer languages and data file formats were probably not
capable of being works protected by copyright within the meaning of the Information
Society Directive (Infosoc) -- Court held that WPL was permitted to reverse engineer the
SAS Institute's software -- in doing so WPL went beyond the scope of their software
licence.
Subject: Copyright owners' rights--information technology industry
Subject: Copyright infringement--case law--United Kingdom
Subject: Computer-related inventions--case law--United Kingdom
SNIPER No.: 2013/02084
Author: Australia. Advisory Council on Intellectual Property.
Title: Review of the designs system
Source: Review of the Designs System. 2013.
Summary: Concerns raised about the effectiveness of the designs system in Australia - whether it is meeting its original policy objectives -- system not comprehensively
reviewed since it started in 2004 to assess whether it is effective and appropriate for
Australia now and in the future -- request to ACIP from the then Parliamentary Secretary
for Innovation and Industry, the Hon Mark Dreyfus, in May 2012 -- investigate the
effectiveness of the designs system in stimulating innovation by Australian users and
the impact the designs system has on economic growth -- Issues Paper released early
September 2013 -- seeking views from stakeholders, including users of the designs
system -- responses to questions posed in paper -- opportunities for enhancing the
system -- deficiencies and unintended consequences arising from implementing the
system -- written submissions due by 31 October 2013.
Subject: Industrial design systems--reviews--Australia
Subject: Intellectual property systems--reviews--Australia
SNIPER No.: 2013/00793
Author: Sheikh, Mita
Title: Revocation of patents: failure to disclose or false disclosure of information about
foreign application
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Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 1, December 2012January 2013, p. 46.
Summary: Grounds for revocation of patents in India -- Section 8 of the Indian Patents
Act -- failure to disclose or false disclosure of information about the foreign application -keeping the Indian Patent Office informed on the progress of corresponding foreign
applications -- recent decision of the Delhi High Court -- Hoffman La Roche v. Cipla -discretion in the Court not to revoke the patent solely on the grounds of non-compliance
of Section 8.
Subject: Patent revocation--India
Subject: Intellectual property offices--procedure--India
SNIPER No.: 2013/01903
Author: Agno, Ma. Consuelo C.
Title: Rights of performers in audiovisual works
Source: World Intellectual Property Review. May-June 2013, p. 100.
Summary: Protection of performers' rights is an important concern in the Philippines -law is deficient in so far as it fails to provide for rights specific to performers of
audiovisual works -- Intellectual Property Office of the Philippines joined the other
member states of the World IP Organization in adopting the Treaty on the Protection of
Audiovisual Performances (Beijing Treaty) -- treaty aims to protect the rights of
audiovisual performers across the world -- ensure a continuing source of revenues for
these performers -- hoped that the Philippines will soon ratify the Beijing treaty.
Subject: Neighbouring rights--law and legislation--Philippines
Subject: Neighbouring rights--Philippines
SNIPER No.: 2013/01887
Author: Rana, Lucy
Title: The rise and rise of sports in India
Source: World Intellectual Property Review. May-June 2013, pp. 76-77.
Summary: Intellectual property (IP) assets associated with sports and their protection in
India -- trade marks -- copyright -- domain names -- patents -- industrial designs.
Subject: Intellectual property rights--tourism and recreation industry--India
Subject: Law--India
SNIPER No.: 2013/02167
Author: Min, Eun-Joo
Title: Safety in numbers: working together to build respect for IP
Source: World Trademark Review. No. 45, October-November 2013, pp. 66-67.
Summary: Contributions that can be made by rights holders in the effort to build
respect for intellectual property -- collaborative efforts -- understanding infringement -rights holder engagement -- a policy for the future.
Subject: Business collaboration
Subject: Intellectual property enforcement
SNIPER No.: 2013/02042
Author: Daniels, Mark
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Title: Schütz ohne Schutz!
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 9, September
2013, pp. 668-669.
Summary: Replacement of a bottle by a third party did not infringe a patent involving a
container made up of a cage and bottle -- Schütz (UK) Limited v Werit (UK) Limited;
Schütz (UK) Limited No 2 v Werit (UK) Limited -- s 60(1)(a) of the Patents Act 1977 -debate on whether reconditioning, repair or replacement of parts amounts to 'making' an
infringing product -- intermediate bulk container (IBC) -- secondary market in bottles -Werit sold bottles to Delta Containers Ltd who 'made' the infringing product -- Schütz
sued Werit under s 60(2) of the Patents Act 1977 -- appeal to Supreme Court -- 'makes'
and the ten principles used by the Supreme Court to interpret this word drawing on
other European sources -- appeal relating to s 68 of the Patents Act 1977 failed as
Werit did not infringe according to the Supreme Court -- difference to United Wire Ltd v
Screen Repair Services (Scotland) Ltd -- practical significance.
Subject: Patent infringement--case law--United Kingdom
Subject: Spare parts--case law--United Kingdom
SNIPER No.: 2013/02117
Author: Obhan, Essenese
Title: Searching for clarity in India's divisional applications
Source: Managing Intellectual Property. India IP Focus, 2013, pp. 32-36.
Summary: Changes in Indian patent practice -- key issue that has remained
unchallenged for a long time in India relates to the practice of filing divisional
applications -- Intellectual Property Appellate Board (IPAB) decisions have invited a reevaluation of existing practice -- some of the changes -- implications of these decisions
on future applicants.
Subject: Divisional applications (Patents)--India
Subject: Patents--law and legislation--India
SNIPER No.: 2013/02008
Author: Spear, Brian
Title: Sebastian de Ferranti: electrical engineering pioneer and enthusiastic patentee
Source: World Patent Information. Vol. 35 No. 3, September 2013, pp. 230-234.
Summary: Sebastian de Ferranti (1864 - 1930) was largely self-taught but became an
outstanding Great Britain practical engineer -- his innovations were particularly
important to the development of the electric power supply industry -- founded the
successful R & D driven company named after him -- was a prolific and successful
patentee in a very wide range of technical fields – filed over 270 patents in Great Britain.
Subject: Ferranti, Sebastian de--history
Subject: Patents--history
SNIPER No.: 2013/02113
Author: Shanker, Archana
Title: Section 8: a guide to foreign filing in India
Source: Managing Intellectual Property. India IP Focus, 2013, pp. 8-13.
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Summary: Section 8 of the Indian Patents Act -- obligations under the section -- failure
to disclose information under section 8 is a ground for invalidation -- the reason as to
the introduction of section 8 into the Indian Patents Act -- Indian Patent Office was not
equipped to deal with the issues of patentability as regards documents of relevance
published abroad -- Indian Patent Office is now an International Search Authority (ISA)
with access to extensive patent and non-patent literature -- details regarding
corresponding patent applications in other jurisdictions is in the public domain -- primary
interpretation of section 8 was given in Chemtura Corporation v Union of India -- varied
interpretation of s. 8 -- grey areas remain -- mens rea -- rules of de minimus -- err on the
safe side.
Subject: Patent applications--India
Subject: Patents--law and legislation--India
SNIPER No.: 2013/02072
Author: Fletcher, Anthony L.
Title: Separating descriptive sheep from generic goats
Source: Trademark Reporter. Vol. 103 No. 2, 2013, pp. 487-502.
Summary: Generic trade mark names unavailable for protection -- descriptive terms
only available if they acquire "secondary meaning" -- registration by the Patent and
Trade Mark Office -- litigation in the courts -- the problem -- suggested answers
Subject: Trade mark registrability--United States
Subject: Trade mark distinctiveness--United States
SNIPER No.: 2013/02044
Author: Neophytou, John Peter
Title: Seven for all mankind: assessing the likelihood of confusion
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 9, September
2013, pp. 672-673.
Summary: The Court of Justice of the European Union (CJEU) has approved an
opposition against jeans maker Seven for all mankind (SAM) -- Seven for all mankind
LLC v Seven Spa -- opposition against a trademark and Article 8(1) of Regulation
207/2009 on Community trade marks -- word mark 'SEVEN FOR ALL MANKIND' in
Class 14 and Class 18 -- Seven filed opposition based on their three earlier marks -Opposition Division upheld opposition to a limited extent -- Board of Appeal did not find
likelihood of confusion -- later appeal by Seven found support in the General Court -SAM appeal to the CJEU -- CJEU decided that due to the word 'seven' the marks were
similar and found a likelihood of confusion -- assessment set a low threshold of
distinctiveness for marks with a low distinctive character.
Subject: Trade mark opposition--case law--Europe
Subject: Confusing similarity--case law--Europe
Subject: Trade mark distinctiveness--case law--Europe
SNIPER No.: 2013/02106
Author: Ryan, Margaret
Title: Shetland Islands showdown: the legality of hyperlinks and framing technology on
the Internet
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IP Australia Library
Source: Intellectual Property Forum. No. 30, August 1997, pp. 26-36.
Summary: Facts of the Shetland Times case -- headlines as cable programmes -headlines as literary works -- Internet hyperlinking -- copyright infringement and
hyperlinks -- reproduction right -- diffusion right -- should hyperlinks be illegal -- other
legal remedies -- defamation -- trade mark infringement -- unfair competition -- frames
technology.
Subject: Copyright infringement--case law--United Kingdom
Subject: Copyright licensing--United Kingdom
Subject: Fair use (Copyright)--United Kingdom
SNIPER No.: 2013/01956
Author: Fernández-Novoa, Luis
Title: The Spanish Supreme Court gets serious on patents
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 8, August 2013,
pp. 641-650.
Summary: Cassation patent judgments brought before the Spanish Supreme Court -- in
the past patent cases rarely reached the Spanish Supreme Court -- in 2011 and 2012
however six patent cases reached the highest court in Spain -- procedural requirements
that restrict access of cases to the Supreme Court seem to be becoming reduced -- the
EPO guidelines and the decisions of the EPO Boards of Appeal -- interpretation of the
requirements for implicit disclosure and lack of novelty -- Lek v Warner-Lambert -infringement by equivalents in Spain -- Cinfa et al v Eli Lilly -- Spanish reservation to the
patentability of pharmaceutical products -- Lundbeck & Almirall v Sandoz and others -equitable remuneration for infringing 'new' product claims added to patents initially
granted as process patents -- MSD v Chemo Ibérica and others -- proving damage in
patent infringement cases -- Abbott v Roig Farma -- date of the effect of a European
patent in Spain -- Envac v Ros Roca.
Subject: Patents--case law--Spain
Subject: Legal procedure--Spain
SNIPER No.: 2013/02162
Author: Matheson, Julia Anne
Title: Standing ground: an analysis of territoriality in US trademark law
Source: World Trademark Review. No. 45, October-November 2013, pp. 46-48.
Summary: World without borders -- trade mark law is territorial -- United States courts
are increasingly forced to wrestle with cases in which US registrants seek relief that
would require the extraterritorial application of the Lanham Act -- Supreme Court
addressed the issue of extraterritorial application of the Lanham Act over 60 years ago,
in Steele v Bulova -- does extraterritorial application of Lanham Act fall foul of the
fundamental "use in commerce" requirement? -- extraterritorial application of the
Lanham Act after Steele -- Vanity Fair Mills v T Eaton -- McBee v Delica -- latest
developments -- Juicy Couture v Bella International -- Gucci Am v Guess? -Engineering and Distribution v Shandong Linglong Rubber -- what is off limits.
Subject: Trade marks--case law--United States
Subject: Legal jurisdiction--United States
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SNIPER No.: 2013/01905
Author: Belotcerkovskii, Alex
Title: Striving for improvement: a new IP court
Source: World Intellectual Property Review. May-June 2013, p. 102.
Summary: Russian court system has recently been supplemented with the Court of
Intellectual Property -- located in Moscow -- first specialised commercial court in the
country -- IP court's authority is mostly in lawsuits between businesses on economic
matters, including administrative cases -- contested regulatory and statutory acts -disputes on grant or invalidation -- disputes relating to infringement rights, licensing and
assignments -- review and regularise court practice -- prepare suggestions on
amendments to current laws and other regulatory acts -- provide court statistics -problems and solutions -- future expectations.
Subject: Patent litigation--procedure--Russia
Subject: Legal jurisdiction--Russia
SNIPER No.: 2013/01897
Author: Lantos, Michael
Title: Submission claims and evidence in trademark proceedings
Source: World Intellectual Property Review. May-June 2013, p. 93.
Summary: Significance of submitting claims and evidence in trade mark status and
opposition proceedings before the Hungarian Intellectual Property Office (HIPO) in a
timely manner -- incomplete evidence or claims filed late cannot be rectified in the
appeal proceedings before the courts -- examples outlining where the court has not
accepted late evidence (or claims).
Subject: Evidence--intellectual property industry--Hungary
Subject: Trade marks--case law--Hungary
SNIPER No.: 2013/01943
Author: Kinge, Parag
Title: The Supreme Court of India on the protection of incremental inventions
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 8, August 2013,
pp. 581-583.
Summary: Validity of section 3(d) of the Indian Patent Act of 1970 -- Novartis AG v
Union of India and others -- efficacy of a substance in the Indian Patent Act of 1970
(IPA) -- 2005 amendment to the IPA -- GLIVEC -- beta crystal form of imatinib mesylate
(b-IM) -- anti-cancer drug -- generic versions of drug -- many similar cases pending in
lower courts -- analysis -- 'bioavailability' and 'efficacy' of molecules -- scope of a claim - activation of product patent regime in India -- practical significance.
Subject: Pharmaceuticals--case law--India
Subject: Patentability--pharmaceutical industry--India
SNIPER No.: 2013/01884
Author: Bhering, Philippe
Title: Taking TRIPS: the enforcement of IP in Brazil
Source: World Intellectual Property Review. May-June 2013, pp. 66-68.
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Summary: Council for the World Trade Organization (WTO's) Trade-Related Aspects of
Intellectual Property Rights (TRIPS) Agreement -- met to discuss the request of the socalled least developed countries (LDCs) -- for an extension of the transition period prior
to full compliance by these countries with the TRIPS rules on intellectual property (IP) -the proposal has received the strong support of developing countries, including Brazil -Brazilian Law of Industrial Property (LPI) -- remedies prescribed by the LPI.
Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994
April 15)
Subject: Intellectual property enforcement--Brazil
Subject: Intellectual property law--Brazil
SNIPER No.: 2013/01895
Author: Marie, Aurélia
Title: Technology names and trademarks in France
Source: World Intellectual Property Review. May-June 2013, p. 91.
Summary: Difficulty of registering a technological concept or new technology name as
a genuine trade mark -- difficulty of defining the list of goods and services that a trade
mark covers -- certain conditions have to be respected for the trade mark's use to be
considered genuine under French law -- genuine use -- name must be used as a trade
mark -- it must distinguish the relevant products and services from those belonging to
other companies -- the name must identify the origin of the technology -- the name of
the registered mark must be distinctive -- must not become a descriptive term of the
specific technology -- representation of the trade mark in advertising -- registered trade
mark symbols -- advertising alone may not be considered as sufficient use -- trade
marks on the packaging of products incorporating the technology -- collecting and
saving evidence of trade mark use.
Subject: Trade mark use--France
Subject: Trade mark registration--France
SNIPER No.: 2013/01891
Author: Carrington, Victoria E.
Title: The Thymes case: two steps forward, one step back
Source: World Intellectual Property Review. May-June 2013, p. 87.
Summary: Recent case decided by the Federal Court of Canada -- clarified and
clouded the issue of how to perfect the filing basis of use and registration abroad -applicants must identify one or more ground(s) on which they seek to rely for obtaining
a trade mark registration -- common filing bases -- Trade-marks Act is not entirely clear
with regard to where and when the use must take place -- decision in The Thymes v
Reitmans (Canada) Limited -- falls short of resolving the uncertainty.
Subject: Trade mark registration--Canada
Subject: Trade mark use--Canada
SNIPER No.: 2013/02030
Author: Key-Matuszak, Peter
Title: Time shifting after NRL v Optus: a need for amendments
Source: European Intellectual Property Review. Vol. 35 No. 8, 2013, pp. 439-444.
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Summary: National Rugby League Investments Pty Ltd v Singtel Optus Pty Ltd -recent case of a time-shifting, cloud-based service -- inappropriate constraints of the
Copyright Act on the time shifting exception – out-dated presuppositions of the time
shifting defence -- three recommendations for amendments to the Copyright Act in
relation to the time shifting exception -- nexus requirement to decide who makes a copy
-- time shifting exception applied to services -- courts to apply the exception using a
translatory approach -- introduction of a fair use exception as an alternative or addition
to fair dealing exceptions.
Subject: Copyright--law and legislation--Australia
Subject: Copyright infringement--case law--Australia
Subject: Copyright owner's rights--culture and entertainment industry--Australia
Subject: Television broadcasts
SNIPER No.: 2013/02170
Author: Diamond, Andrew F.
Title: Time to make your brand protection strategy more social in Indonesia
Source: World Trademark Review. No. 45, October-November 2013, pp. 74-77.
Summary: Indonesia famed for its diversity -- unique legal matrix -- high degree of legal
uncertainty -- undermines business confidence -- intellectual property (IP) laws in
Indonesia have not always kept pace with Indonesia's international obligations -- gaps in
protection -- other legal uncertainties -- questionable commitment to enforcement -brand owners expanding into Indonesia -- engaging with consumers through social
media -- importance of developing a social media protection strategy -- factors that
should fuel continued domestic spending in Indonesia -- Indonesians are fanatical users
and consumers of social media -- key players in the Indonesia social media scene -expanding e-commerce -- protection strategies.
Subject: User-generated content--Indonesia
Subject: Brand management--Indonesia
SNIPER No.: 2013/02166
Author: Tan, Loke Khoon, 1962Title: The top 10 enforcement trends against luxury fakes in China
Source: World Trademark Review. No. 45, October-November 2013, pp. 62-65.
Summary: Counterfeiting -- major issue affecting the luxury goods market in China -attractive market for expansion -- weak enforcement of intellectual property (IP) laws -preventive measures against counterfeiters -- methods of enforcement -- intermediary
liability against internet service providers (ISPs) and landlords -- increased damages
and harsher penalties -- well known mark determination is harder to obtain for foreign
entities -- joint lobbying initiatives and cooperation with authorities -- acceptance of
criminal cases by Public Security Bureau -- collaborating with competitors on IP issues - shift of focus to internet-based infringement -- increasing brand awareness through
social media -- resolving IP disputes through alternative dispute resolution -- reinvention
as a defensive strategy.
Subject: Counterfeiting--China
Subject: Intellectual property enforcement--China
Subject: Luxury goods--China
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SNIPER No.: 2013/02080
Author: Freeman, Iain
Title: The tortured prehistory of the Xbox One: an insight into future issues for
intellectual property and digital media
Source: Australian Intellectual Property Law Bulletin. Vol. 26 No. 3, September 2013,
pp. 78-79.
Summary: Attitudes toward electronic media and video games -- Microsoft's 'Xbox One'
console -- game would not function without a broadband connection to the internet -users limited to small numbers -- restrictions on selling or trading the game -- backlash
against the new approach to IP -- flip-flop in position by Microsoft -- games able to be
played offline and freely traded -- gamers do not care about IP rights
Subject: Multimedia works
Subject: Intellectual property rights
Subject: Copyright licensing
SNIPER No.: 2013/02093
Author: Ghosh, Arghya
Added author: University of New South Wales. Australian School of Business
Title: Trade liberalization, absorbtive capacity and the protection of intellectual property
Source: Australian School of Business Research Paper, 2013-11. May 2013.
Summary: Trade liberalisation affects South's incentive to protect intellectual property
rights -- effective cost difference -- strengthening IPR protection -- North/South duopoly
module -- suggests imposing a strong IPR regime might retard industrial development of
the developing countries -- foreign direct investments (FDI).
Subject: International trade
Subject: Economics--Australia
Subject: Technology transfer
SNIPER No.: 2013/01899
Author: Chew, Kherk Ying
Title: Trademark appeals in Malaysia
Source: World Intellectual Property Review. May-June 2013, p. 96.
Summary: Appeals against the decisions of the Registrar of Trade Marks are heard by
the High Court -- further appeal to the Court of Appeal -- final appeal to the Federal
Court if certain preconditions are met -- confirmed by the Federal Court in Yong Teng
Hing B/S Hong Kong Trading Co. v Walton International Limited -- Federal Court
discussed the same issue in the case of Tio Chee Hing v United Overseas Bank
(Malaysia) Bhd.
Subject: Legal jurisdiction--Malaysia
Subject: Legal procedure--Malaysia
SNIPER No.: 2013/02032
Author: Lindemans, Jan-Diederik
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IP Australia Library
Title: Transatlantic "hide and seek": proving infringement of intellectual property rights
through pre-trial proceedings for taking evidence in the United States and the European
Union
Source: European Intellectual Property Review. Vol. 35 No. 8, 2013, pp. 455-462.
Summary: Procedures for taking pre-trial evidence of IP infringements in the United
States -- procedure created by the European Commission in the IP Enforcement
Directive -- comparison of both procedures -- US system is compared with the national
procedures of three EU Member States that have different legal traditions -- United
Kingdom -- Germany -- Belgium -- differences and similarities in pre-trial discovery
between the systems.
Subject: Intellectual property enforcement--Europe
Subject: Legal procedure--Europe
Subject: Intellectual property infringement--law and legislation--Europe
Subject: Intellectual property infringement--law and legislation--United States
SNIPER No.: 2013/01949
Author: Meale, Darren
Title: A triple strike against piracy as the music industry secures three more blocking
injunctions
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 8, August 2013,
pp. 591-594.
Summary: Section 97A blocking injunctions used to order United Kingdom internet
service providers (ISPs) to restrict peer-to-peer file sharing -- EMI Records Ltd and
others v British Sky Broadcasting Ltd and others -- Section 97A of the UK's Copyright,
Designs and Patents Act 1988 (CDPA) -- six leading UK ISPs were asked to block three
BitTorrent trackers -- KAT (KickassTorrents), H33T and Fenopy -- films, television
programmes, computer games and other products -- no actual claim of copyright
infringement needed to be made and the ISPs did not oppose the orders -- matters that
needed to be established for the blocks to be ordered -- website takedown policies -these sort of applications are relatively quick, inexpensive and efficient -- further such
applications reported to follow.
Subject: Copyright infringement--case law--United Kingdom
Subject: Carriage service providers--United Kingdom
Subject: Piracy--culture and entertainment industry--United Kingdom
SNIPER No.: 2013/02160
Author: Margellos, Théophile M.
Title: Two years of progress in mediation
Source: World Trademark Review. No. 45, October-November 2013, pp. 40-41.
Summary: Mediation service at Office of Harmonization for the Internal Market (OHIM)
-- wide a range of mediators -- range of linguistic skills -- training mediators -- European
Code of Conduct for mediators -- initial response to the launch of the service -conciliatory nature at the core of the mediation service -- mediators act as neutral
intermediaries between the parties and facilitate a settlement between them -- appeals - engaging in a mediation process -- mediation process -- timeframe -- costs.
Subject: Dispute resolution--procedure--Europe
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Subject: Dispute resolution--reform--Europe
SNIPER No.: 2013/01458
Author: Franceschelli, Maria Luigia
Title: 'Ugly can be beautiful' but can't be a trade mark: the case of Crocs shoes
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 7, July 2013, pp.
504-505.
Summary: Crocs, Inc v Supermarket Della Calzatura sas and Progetti srl, Court of
Venice (Court of First instance, Italy), Judgment of 15 February 2012 -- Court of Venice
declares Crocs ineligible for trade mark protection on the ground they consist
exclusively of a shape giving them substantial value -- judge excludes trade mark
infringement by shoes entirely resembling the well-known clogs and declares Crocs only
protectable under unfair competition law – shape of the clogs a three-dimensional mark
-- ugly and strange shape may never meet the aesthetically appealing requirement -the Croc shape become a competitive edge -- shape conferred substantial value -shape mark was invalid -- trade mark infringement claim rejected -- amounted to an act
of unfair competition.
Subject: Trade mark infringement--case law--Italy
Subject: Shape marks--registrability--Italy
SNIPER No.: 2013/02145
Author: Kempton, Nick
Title: UK Court of Appeal opens the ways for pan-European jurisdiction on
infringement: Actavis Group hf and Medis ehf v Eli Lilly and Company
Source: Bio-Science Law Review. Vol. 13 No. 2, 2013, pp. 71-73.
Summary: Patent infringement -- whether the English court has jurisdiction to hear a
claim for a declaration of non-infringement -- UK designation of a European patent but
also the non-UK designations -- granting declaratory relief on a pan-European basis -dismissing of the appeal and cross appeal -- decisions of the Court of Appeal.
Subject: Patent litigation--United Kingdom
Subject: Patent litigation--Europe
Subject: Legal jurisdiction--United Kingdom
SNIPER No.: 2013/01948
Author: Rosati, Eleonora
Title: US Supreme Court holds first sale doctrine applicable to works lawfully made
abroad
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 8, August 2013,
pp. 590-591.
Summary: Exhaustion of copyright owners' rights -- Kirtsaeng v John Wiley & Sons -- in
contrast to earlier lower court decisions the US Supreme Court found that first sale
doctrine applies -- 17 USC Section 109(a) -- petitioner had foreign-edition English
language textbooks bought at Thai bookshops and then sold them in the US -- s 106
grants copyright owner certain rights but limitations apply such as s109(a)'s first sale
doctrine -- Quality King Distributors, Inc v L'anza Research Int'l -- 'lawfully made'
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explained -- grey market goods and the decision -- different legal treatment of analogue
and digital copies of a work.
Subject: Copyright exhaustion--case law--United States
Subject: Copyright owners' rights--case law--United States
SNIPER No.: 2013/02147
Author: Kailasanath, Vinita
Title: US Supreme Court rules on BRAC1 and BRAC2 Patents Association of
Molecular Pathology v Myriad Genetics: isolated DNA sequences are not patent eligible
but cDNA is patent eligible
Source: Bio-Science Law Review. Vol. 13 No. 2, 2013, pp. 77-79.
Summary: Patentability of biotechnological and biomedical inventions -- Supreme Court
held that a naturally occurring DNA segment is a product of nature and not patent
eligible because it has been isolated – the removal of the other DNA to create the cDNA
results in something new -- 'distinct from the DNA from which it was derived' -- finding
the location of the BRCA1 and BRCA2 genes was important, useful and required
extensive effect -- those factors alone were insufficient to render the genes patentable.
Subject: Patenting of life forms--case law--United States
Subject: Genes--patentability--United States
SNIPER No.: 2013/02134
Author: Mascarenhas, Viren
Title: Use investment treaties to protect your rights
Source: Managing Intellectual Property. No. 232, September 2013, pp. 42-45.
Summary: Companies that believe their intellectual property (IP) rights have been
breached by governments overseas, traditionally had to persuade their own government
to take the matter to the World Trade Organisation (WTO) or to launch legal
proceedings through the domestic courts -- growth of bilateral investment treaties offers
a new route in the search for remedies -- if they qualify as an investor, they may be able
to bring arbitral claims directly against the state where they have made an investment
and where they believe the investment has been compromised by government action -treaties designed to protect foreign investments are governed by international law -may provide a more favourable basis for a claim than a restrictive domestic legal regime
-- companies should consider what treaty provisions may apply to their investment -what kinds of investment structures will maximise protection for their IP.
Subject: Investment--treaties
Subject: Dispute resolution
SNIPER No.: 2013/01946
Author: Smith, Leigh J.
Title: Useful guidance on figurative marks
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 8, August 2013,
pp. 587-588.
Summary: Figurative Community trade mark (CTM) did not infringe an earlier
registered word mark -- K2 Sports Europe GmbH v Office of Harmonisation for the
Internal Market (OHIM) -- General Court of the European Union upheld decision of
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OHIM Board of Appeal -- Kahru -- graphic element looking like the letter 'K' and the
word 'sport' -- 'K2 Sports' -- goods in the same classes -- Article 8(1)(b) of the
Community Trade Mark Regulation (207/2009) -- marks dissimilar overall -- identical
elements 'sport/sports' were descriptive -- distinctive elements of the marks -- phonetic
similarity of the marks -- practical significance.
Subject: Trade mark infringement--case law--Europe
Subject: Confusing similarity--case law--Europe
Subject: Trade mark distinctiveness--case law--Europe
SNIPER No.: 2013/02142
Author: Cohen, Simon
Title: Vaccines and SPCs: the CJEU reaches a fork in the road
Source: Bio-Science Law Review. Vol. 13 No. 2, 2013, pp. 35-48.
Summary: Challenge posed by vaccines in regards to eligibility -- Court of Justice of
the European Union (CJEU) -- interpretation of the supplementary protection certificate
(SPC) Regulation -- GlaxoSmithKline v Comptroller-General of Patents -- SPC
protection for combinations -- SPC applicants dilemma -- valid authorisations for
combination products -- protection by a basic patent in force -- result of the Medeva
ruling -- Medeva and selected SPC cases decided in the wake of Medeva -- how must
the product be disclosed in the claims of the basic patent -- specified and identifies -national courts diverge again -- is an adjunct an active ingredient -- why the question
has gone to the CJEU -- decision exemplifying the 'strict' approach -- Neurim
'technological approach'.
Subject: Patent extension--case law--Europe
Subject: Pharmaceutical industry--Europe
Subject: Legal procedure
SNIPER No.: 2013/01460
Author: Montagnon, Rachel
Title: The value of evidence from witnesses identified using witness gathering surveys
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 7, July 2013, pp.
507-511.
Summary: Trade mark infringement case -- Marks & Spencer v Interflora [2012] EWCA
1501, Court of Appeal, England and Wales, 20 November 2012 -- use of sponsored
keywords for online searches -- Court set out its requirements for the admissibility of
evidence -- Court of Appeal took a strict line in relation to evidence from witnesses
identified through surveys designed to find witnesses with a particular viewpoint -- 'pilot'
surveys -- Court also disapproved of the encouragement of speculation by witnesses in
areas in which they would not otherwise have 'embarked' -- Interflora and Marks &
Spencer (M&S).
Subject: Trade mark infringement--case law--United Kingdom
Subject: Legal procedure--United Kingdom
Subject: Evidence
SNIPER No.: 2013/00792
Author: Quirk, Andrew
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Title: Vietnam franchising: anticipate the steps to opening for business
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 1, December 2012January 2013, p. 45.
Summary: Setting up a franchise business in Vietnam -- issues involved -- need
registration of a trade mark in Vietnam before starting franchise activities -- business to
be franchised must have been in operation for at least a year before franchising in
Vietnam -- Vietnamese law prescribes certain terms for franchise agreements and
certain prohibitions -- steps for franchisor to take
Subject: Franchising--Vietnam
SNIPER No.: 2013/02100
Author: Bently, Lionel, 1964Title: Visuality and textuality in nineteeth century intellectual property law: The Utility
Designs Act 1843
Source: Intellectual Property Forum. No. 29, May 1997, pp. 28-33.
Summary: Provisions and interpretation of the Utility Designs Act 1854 -- background
to the UDA -- reception of the UDA -- nature of the conflict between the UDA and the
patent system.
Subject: Great Britain. Utility Designs Act 1843
Subject: Minor patents--history--United Kingdom
SNIPER No.: 2013/01988
Author: Rose, David
Title: A way through the computer programs 'as such' minefield
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of
Patent Agents. Vol. 42 No. 7, July 2013, pp. 377-378.
Summary: Court of Appeal issued its decision in HTC Europe Co Limited v Apple Inc
([2013] EWCA -Civ 451) -- overturned the trial court's finding that Apple's European
Patent (UK) was invalid on the grounds that claims 1 and 2 related to a computer
program 'as such' and was therefore excluded from patentability -- were invalid on the
grounds of obviousness in the light of the prior art -- summary of the development in
case law concerning the computer program exception -- decision will be welcomed by
patentees as setting out clear guidance as to the computer program 'as such' exception.
Subject: Patent validity--information technology industry--Europe
SNIPER No.: 2013/02192
Author: Barraclough, Emma
Title: What Myriad means for biotech
Source: WIPO Magazine. No. 4, August 2013, pp. 21-23.
Summary: United States Supreme Court decision in Association for Molecular
Pathology v Myriad Genetics -- question before the Court was whether isolated human
genes are patentable -- plaintiffs declare victory for their campaign against gene patents
-- dispute raises emotive issues relating to the ownership and control of genetic material
-- Myriad sets the US apart from its economic rivals when it comes to rules on patenting
gene sequences -- key biotech cases -- Diamond v Chakrabarty -- Harvard Oncomouse
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-- Prometheus Laboratories, Inc v Mayo Collaborative Services -- battle over biotech far
from over.
Subject: Patenting of life forms--case law--United States
Subject: Genes--patentability--United States
SNIPER No.: 2013/02187
Author: Pescod, Dan
Title: What the Marrakesh treaty means for blind people
Source: WIPO Magazine. No. 4, August 2013, pp. 5-6.
Summary: World Blind Union (WBU) Right to Read Campaign -- removing barriers to
access inherent in copyright law -- WIPO's Standing Committee on Copyright and
Related Rights (SCCR) -- Marrakesh Treaty -- Marrakesh Diplomatic Conference -possibilities for organisations like the Royal National Institute of Blind People (RNIB) in
the United Kingdom (UK) to make books accessible and share them across
international borders with those who need them most.
Subject: World Intellectual Property Organization
Subject: Copyright--treaties
Subject: Fair use (Copyright)
SNIPER No.: 2013/02135
Title: When can trade marks be used as keywords?
Source: Managing Intellectual Property. No. 232, September 2013, pp. 46-50.
Summary: Google's AdWords -- advertisers are able to bid for search terms -- including
others' trade marks -- keyword advertising can be highly effective -- brand owners are
concerned that their customers will be confused -- courts in various jurisdictions have
tackled questions -- whether use of a trade mark as a keyword amounts to commercial
use -- whether there is infringement -- if so who is liable for it -- what evidence is needed
to show damage -- courts have generally set the bar high for brand owners -- still
possible to succeed in certain cases -- Interflora case in the United Kingdom -- situation
in Australia, India, Europe and the United States.
Subject: Keyword advertising
Subject: Trade mark infringement--case law
SNIPER No.: 2013/01896
Author: Künzel, Jens
Title: When is the descriptive use of a mark not in accordance with honest practices?
Source: World Intellectual Property Review. May-June 2013, p. 92.
Summary: Liquor sold in Germany under the trade mark 'Amarula' -- another company
started to sell a liquor called Marulablu -- manufacturer of Amarula liquor saw Marulablu
as an infringement of several of its own trade marks -- asserted that the Marulablu bottle
design could be attacked under unfair competition rules of passing off -- Düsseldorf
District Court issued a judgment granting a restraining order and claims for damages,
account of profits and deletion of 'Marulablu' trade mark -- Düsseldorf Court of Appeal
reversed the judgment because it held that the use of 'Marulablu' was descriptive within
the meaning of a provision in the German Trademarks Act -- Federal Supreme Court's
decision -- plaintiff pointed to the opinion of private examiners who said that the
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attacked liquor did not contain marula fruits -- misleading -- could be against honest
practices in commercial matters.
Subject: Trade mark registrability--case law--Germany
Subject: Confusing similarity--case law--Germany
SNIPER No.: 2013/01890
Author: Licks, Otto B.
Title: Who approves?: RDC 21 stirs the pot
Source: World Intellectual Property Review. May-June 2013, p. 86.
Summary: Brazilian food and drug administration (ANVISA) regulation RDC 21 of 2013
-- violates the World Trade Organization TRIPS Agreement, the Paris Convention, the
Brazilian patent law and the country's 1988 Constitution -- amends regulation RDC 48 of
2008 -- established ANVISA's procedures for the prior approval for the grant of
pharmaceutical applications claiming pharmaceutical products or processes under the
statutory authority of Article 229-C of the Brazilian patent statute -- too soon to fully
understand what will be the impact for the Brazilian patent system of the RDC 21.
Subject: Patents--law and legislation--Brazil
Subject: Pharmaceuticals--law and legislation--Brazil
SNIPER No.: 2013/01954
Author: Sanderson, Jay
Title: Why UPOV is relevant, transparent and looking to the future: a conversation with
Peter Button
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 8, August 2013,
pp. 615-623.
Summary: The International Convention for the Protection of New Varieties of Plants
(UPOV) and plant variety rights generally do not receive the sort of focus and respect
that other intellectual property rights command -- aversion of the field by the legal
profession -- criticism that it is outmoded -- discussion with Vice Secretary-General of
UPOV Peter Button -- importance of new varieties of plants to agricultural industries and
food security -- obligations for World Trade Organization (WTO) members to provide
plant variety protection in their national laws -- criticisms levelled at UPOV -- alleged
lack of transparency and accountability -- alleged unsuitability of the UPOV system for
all its members in particular developing countries -- Peter Buttons detailed response -UPOV and the benefit of society -- UPOV's current focus and future issues.
Subject: International Convention for the Protection of New Varieties of Plants (1961
December 2)
Subject: International plant rights
Subject: Plant breeder's rights
SNIPER No.: 2013/01953
Author: Meale, Darren
Title: Your name in lights? Just so long as it's honest: the 'own name' defence in trade
mark and passing off law
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 8, August 2013,
pp. 603-614.
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Summary: The 'own name' defence over the past 20 years under English and
harmonized European Law -- Article 6(1)(a) of Trade Marks Directive 2008/95 -- Trade
Marks Act of 1994 -- defining the defence -- use as a trade mark -- defence available to
individuals -- defence for 'legal' persons -- legal persons that have adopted the name of
the natural person -- what sort of trade mark use is permitted -- own-name defence may
succeed under modern trade mark law but it must be used honestly -- knowledge of the
rival mark by searching national and Community trade mark registers -- knowledge of
the rival's objection -- use is less likely to be honest where confusion is caused -- the
defence in passing off -- honest concurrent use -- deceptive mark -- human rights
considerations -- locality defence -- well known marks -- domain name disputes -options for the future.
Subject: Personal names--Europe
Subject: Commercial names--Europe
Subject: Legal defences--Europe
Subject: Trade mark infringement--Europe
SNIPER No.: 2013/02085
Author: Handler, Michael
Title: Zombie marks?: ceased registrations, failed applications and citation objections
under s 44 of the Trade Marks Act
Source: Australian Intellectual Property Journal. Vol. 23 No. 4, August 2013, pp. 206221.
Summary: Potential impact of a case currently in the Federal Court of Australia -- Chia
Khim Lee Food Industries Pte Ltd v Red Bull GmbH -- Red Eagle device and mark -whether a mark that has been removed from the Register on the grounds of non-use
nonetheless remains a "registered" mark for the purposes of s 44 of the Trade Marks
Act 1995 (Cth) if that mark was on the Register at the applicant's priority date -argument that this interpretation of s 44 should be rejected -- longstanding practice of
the Australian Trade Marks Office (TMO) has been to consider that the objection no
longer exists and to accept the registration -- TMO's current practice is consistent with
the Act and case law and is sound policy -- must be maintained -- alternative
interpretation by Red Bull -- mark whose registration has ceased remains a conflicting
mark for the purposes of s 44 -- dramatic and undesirable consequences for current
trade mark practice if Red Bull's argument accepted -- consequences would go well
beyond concerns about the impact of unused marks on applicants for registration
Subject: Trade mark priority--Australia
Subject: Trade mark registrability--Australia
Subject: Trade mark cancellation--Australia
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