Searchable Networked Intellectual Property Electronic Resource
SNIPER
Bulletin
September 2013
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SNIPER Bulletin
IP Australia Library
SNIPER No.: 2013/01344
Author: Hall, Matthew
Title: 3D printing: some of the IP challenges
Source: Australian Intellectual Property Law Bulletin. Vol. 25 No. 10, June 2013, pp.
213-216.
Summary: Increase in the availability and ease of use of three-dimensional (3D)
scanning and printing technology -- technology will gain wider use -- prospects of
disruption will increase -- success or failure depends on how a business reacts to
challenges and opportunities -- practical tips -- what is 3D printing? -- what does it mean
for manufacturers and rights holders? -- do current intellectual property (IP) laws deal
with the challenges faced by this new technology? -- will copyright protect most
products? -- will industrial design protection assist? -- are 3D products counterfeit? -can the law be changed?
Subject: Intellectual property rights--manufacturing and processing industry
Subject: Intellectual property enforcement--manufacturing and processing industry
SNIPER No.: 2013/01925
Author: Barraclough, Emma
Title: The 50 people shaping the future of IP
Source: Managing Intellectual Property. No. 231, July-August 2013, pp. 34-57.
Summary: Annual Managing IP list of the top 50 most influential people in the
intellectual property (IP) industry -- how they have influenced the way that IP is treated
by the law and regarded by the public -- Kim Dotcom -- Benoît Battistelli -- Colleen
Chien -- Aftab Alam -- Chalres Bullock -- Teo Ming Kian -- James Smith -- J. Scott
Evans -- Christian Louboutin -- James Love -- Fernando Dos Santos -- Paul Maier -Jürgen Dressel -- Etienne Sanz de Acedo -- Kerstin Jorna -- Francis Gurry -- Erich
Spangenberg -- Tian Lipu -- Denis Croze -- Teresa Stanek Rea -- Chaitanya Kanojia -Mike Margáin -- Kong Xiang Jun -- Randall Rader -- Annabelle Bennett -- Bob Goodlatte
-- Song Jianhua -- Dids Macdonald -- Richard Mollet -- Toe Su Aung -- Angelina Jolie -Jack Chang -- Florian Müller -- Tim Tebow -- Prabha Sridevan -- Klaus Grabinski -Edith Ramirez -- Dan Ravicher -- Jeremy Phillips -- Anders Jessen -- Joaquín Almunia -Todd Dickinson -- Guy Fawkes -- Song Liuping -- Liu Chuntian -- Hugh Hansen -António Campinos -- Jill McKeough -- Judge James Robart -- Pete Wishart.
Subject: Intellectual property industry--reviews
SNIPER No.: 2013/01286
Author: Drewsen, Alan
Title: 2012 in review: key developments for rights holders
Source: World Intellectual Property Review. March-April 2013, pp. 32-35.
Summary: Trade mark community experienced major global policy developments in
2012 -- accession of countries in Latin America to the Madrid Protocol -- Myanmar's first
trade mark law -- International Trademark Association (INTA) was active on behalf of
trade mark owners -- INTA focused on building strong relationships with the African
Intellectual Property Organization (OAPI) -- across the globe, anti-counterfeiting
remained high on the agenda -- top-level domains (TLDs) -- policy debates about the
value of intellectual property
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Subject: Intellectual property industry--reviews
SNIPER No.: 2013/01804
Author: Chan, Johnny
Title: The 2013 patent survey
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 3, March 2013, pp. 1340.
Summary: Patent attorneys across Asia and the Pacific -- examining latest changes in
patent laws -- Australia, China, Hong Kong, India, Indonesia, Japan, Malaysia, New
Zealand, Pakistan, Philippines, Singapore, South Korea, Sri Lanka, Taiwan, Thailand,
Vietnam.
Subject: Patents--law and legislation--Asia
Subject: Intellectual property industry--statistics--Asia
SNIPER No.: 2013/01087
Author: Maruyama, Ryo
Title: Abenomics and 'sleeping' patents
Source: World Intellectual Property Review. January-February 2013, p. 60.
Shinzo Abe Prime Minister of Japan -- economic policy known as 'Abenomics' -concern that rapid depreciation of the yen might bring danger to the Japanese economy
-- field of Japanese intellectual property (IP) has experienced big changes -- utilisation
of 'sleeping' patents (patents which have been granted but not commercially exploited) - potential benefits of sleeping patents -- future strategy for utilising IP rights.
Subject: Intellectual property rights--Japan
Subject: Patents--Japan
SNIPER No.: 2013/01478
Author: Jacob, Robin, Sir
Title: Abolish patents?
Source: Intellectual Property Forum. No. 93, June 2013, p. 59
Summary: A series of quotations illustrating points of view in the case for or against the
abolishment of the patent system -- one by Mark Twain "...a country without a patent
office and good patent laws was just a crab, and couldn't travel anyway but sideways or
backward" -- Sir Jacob poses several thought-provoking questions and sides against
abolishing the system
Subject: Patents
Subject: Patent systems
SNIPER No.: 2013/01857
Author: Davies, Philippa
Title: Access v contract: competing freedoms in the context of copyright limitations and
exceptions for libraries
Source: European Intellectual Property Review. Vol. 35 No. 7, 2013, pp. 402-414.
Summary: Current debate at World Intellectual Property Organization (WIPO)
campaign for a new international treaty on copyright limitations and exceptions -express provision that private contracts will not override internationally established
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copyright exceptions -- conflict between restrictive contracts and copyright exceptions
for libraries -- proposes a resolution based on revisiting the historical rationales behind
copyright and author's rights systems -- applying the human rights approach to
balancing competing rights and extending public policy regulations on selected US and
EU contractual laws -- "three-step test" -- resolving the libraries dilemma -- revising
contractual principles -- United States -- "unconscionable" clauses -- misuse of
copyright -- pre-emption -- European Union -- Unfair Contract Terms Directive -Copyright Directives on Legal Protection of Databases and Legal Protection of
Computer Programs and the Information Society (InfoSoc).
Subject: Copyright--treaties
Subject: Copyright--reform--Europe
Subject: Copyright--reform--United States
Subject: Copyright--law and legislation--Europe
Subject: Copyright--law and legislation--United States
SNIPER No.: 2013/01401
Author: Adames, Victor M.
Title: The accession of Mexico to the Madrid Protocol
Source: World Intellectual Property Review. Annual, 2013, pp. 76-78.
Summary: Mexico is now a designated country for an international application -challenges faced by the Mexican Institute of Industrial Property (IMPI) and the Mexican
Association for the Protection of Intellectual Property (AMPPI) -- limitations and
concerns relating to trade mark applications -- length of time a straightforward
application takes to achieve registration will go from approximately 6 months to an 18
month period -- challenge to maintain a strict internal control to comply with the
established deadline of certifying the international application -- strict formal
examination process regarding the proper classification of goods and services -conversion of a word mark application into a design application -- implementation of an
opposition system -- commercial strategy of a company and it's economic capacity will
determine whether to file through the Madrid Protocol or to file directly in each country
through an agent.
Subject: Madrid Agreement Concerning the International Registration of Marks (1891
April 14)
Subject: Intellectual property systems--Mexico
Subject: International trade marks--Mexico
SNIPER No.: 2013/01753
Author: Azim-Khan, Rafi
Title: Ad break
Source: Intellectual Property Magazine. July-August 2013, pp. 57-58.
Summary: Companies are fighting harder than ever for market share -- pressure is on
to launch new products and services -- companies are taking a dim view of competitors
eroding their market position or undermining their brand through ''unfair" or "aggressive"
comparisons with their products -- aggressive marketing practices -- European Court of
Justice (ECJ) rulings on the TM Directive v Comparative Advertising Directive -- options
against competitors.
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Subject: Comparative advertising
Subject: Intellectual property rights
SNIPER No.: 2013/01875
Author: Su, Jianfei
Title: All change: a big year for IP legislation
Source: World Intellectual Property Review. May-June 2013, pp. 36-37.
Summary: Possible modification of the Chinese Trademark Law -- amendments aim to
adapt and be consistent with the continuous changes in the practice of intellectual
property (IP) in China -- Draft Amendment to the Patent Law -- mainly focus is on
strengthening administrative enforcement for patent and judicial protection -amendment to the Copyright Law -- scope of works has been enlarged -- legal amount
of compensation will be raised -- system of punitive damages will be introduced -owners of rights protest against the new scope of mandatory licences -- 'safe harbour'
principle and 'red flag' principle will be written into law.
Subject: Intellectual property law--reform--China
SNIPER No.: 2013/01303
Author: Bulilan, Neptali L.
Title: Amendments to the IP code
Source: World Intellectual Property Review. March-April 2013, p. 61.
Summary: Amendments to the Intellectual Property Act of the Philippines -- new office
known as the Bureau of Copyright and Other Related Rights was created -- gives
enforcement powers to the Director General (DG) and Deputy Directors General
(DDGs) of the IP Office of the Philippines (IPOPHL) -- functions of the new bureau -enforcement powers of the DG and DDGs -- amendment also provides for the vicarious
liability of those who benefit from copyright infringement -- an amendment giving special
fair use exemption of the non-commercial reproduction of works for use by blind,
visually and reading-impaired persons.
Subject: Intellectual property law--reform--Philippines
Subject: Copyright--reform--Philippines
SNIPER No.: 2013/01658
Author: Gill, Erin-Michael
Title: America's dominant patent players
Source: Intellectual Asset Management. No. 60, July/August 2013, pp. 8-16.
Summary: Patent ownership -- United States -- companies owning portfolios of more
than 1,000 active patents -- more than 50% of active US patents owned by 300
companies -- ways of leveraging patent value -- research methodology.
Subject: Patent ownership--statistics--United States
SNIPER No.: 2013/00235
Author: Zhan, Qian
Title: Analysis of issues of sound mark registration
Source: China Patents and Trademarks. Vol. 111 No. 4 October 2012, pp. 58-63.
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Summary: Determination of distinctive character of sound marks for registration -- proof
of secondary meaning of sound marks -- determination of functional sound marks -procedural requirements for sound marks registration -- by way of oscilogram or
sonogram -- by way of written description -- stave as appropriate graphic form for
musical marks -- furnishing sound samples such as sound recordings or digital
documents -- draft of the third amendment to the Trademark Law.
Subject: Sound marks--China
Subject: Trade mark registrability--law and legislation--China
SNIPER No.: 2013/01595
Author: Barabash, Igor
Title: Ancillary copyright for publishers: the end of search engines and news
aggregators in Germany?
Source: European Intellectual Property Review. Vol. 35 No. 5, 2013, pp. 243-245.
Summary: Introduction of three new articles into the existing German Copyright Act
(GCA) -- search engines and news aggregators may be liable to pay licence fees if they
display extracts or summaries of stories within a year from when the stories were first
published -- main arguments for the introduction of the ancillary copyright -- opposing
parties -- consequences when new regulation comes into force.
Subject: Copyright--law and legislation--Germany
Subject: Carriage service providers
Subject: Copyright levies--Germany
SNIPER No.: 2013/01821
Author: García-Sellart, Marcelo O.
Title: Anti-counterfeiting: Argentina
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
60-63.
Summary: Key facts to bear in mind when panning anti-counterfeiting strategies -- legal
framework for anti-counterfeiting preventative measures and strategies -- border
measures -- criminal prosecution -- civil enforcement -- anti-counterfeiting online -preventative measures and strategies.
Subject: Counterfeiting--Argentina
Subject: Customs--Argentina
SNIPER No.: 2013/01822
Author: Cheung, Colin
Title: Anti-counterfeiting: Australia
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
64-69.
Summary: Legal framework for anti-counterfeiting preventative measures and
strategies -- border measures -- criminal prosecution -- anti-counterfeiting online -preventative measures and strategies.
Subject: Counterfeiting--Australia
Subject: Customs--Australia
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SNIPER No.: 2013/01823
Author: Cizek, Alexander
Title: Anti-counterfeiting: Austria
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
70-75.
Summary: Legal framework for anti-counterfeiting preventative measures and
strategies -- border measures -- criminal prosecution -- civil enforcement -- anticounterfeiting online -- preventative measures and strategies.
Subject: Counterfeiting--Austria
Subject: Customs--Austria
SNIPER No.: 2013/01824
Author: Lipkus, Lorne M.
Title: Anti-counterfeiting: Canada
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
76-81.
Summary: Legal framework -- legislative reform -- border measures -- criminal
prosecution -- civil enforcement -- anti-counterfeiting online -- preventative measures
and strategies.
Subject: Counterfeiting--Canada
Subject: Customs--Canada
SNIPER No.: 2013/01825
Author: Wang, John Z.
Title: Anti-counterfeiting: China
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
82-87.
Summary: Legal framework -- border measures -- criminal prosecution -- civil
enforcement -- anti-counterfeiting online -- preventative measures and strategies.
Subject: Counterfeiting--China
Subject: Customs--China
SNIPER No.: 2013/01826
Author: Pilar López, María del
Title: Anti-counterfeiting: Costa Rica
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
88-91.
Summary: Legal framework -- border measures -- criminal prosecution -- civil
enforcement -- anti-counterfeiting online -- preventative measures and strategies.
Subject: Counterfeiting--Costa Rica
Subject: Customs--Costa Rica
SNIPER No.: 2013/01827
Author: Rechardt, Lauri
Title: Anti-counterfeiting: Finland
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Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
92-96.
Summary: Legal framework -- border measures -- criminal prosecution -- civil
enforcement -- anti-counterfeiting online -- preventative measures and strategies.
Subject: Counterfeiting--Finland
Subject: Customs--Finland
SNIPER No.: 2013/01828
Author: Casalonga, Caroline
Title: Anti-counterfeiting: France
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
97-102.
Summary: Legal framework -- border measures -- criminal prosecution -- civil
enforcement -- anti-counterfeiting online -- preventative measures and strategies.
Subject: Counterfeiting--France
Subject: Customs--France
SNIPER No.: 2013/01829
Author: Hartwig, Henning
Title: Anti-counterfeiting: Germany
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
103-108.
Summary: Legal framework -- border measures -- criminal prosecution -- civil
enforcement -- anti-counterfeiting online -- preventative measures and strategies.
Subject: Counterfeiting--Germany
Subject: Customs--Germany
SNIPER No.: 2013/01816
Author: Elings, G. Roxanne
Title: Anti-counterfeiting in the fashion and luxury sectors: trends and strategies
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
33-37.
Summary: Fashion and luxury sectors -- first to be impacted by counterfeiting -- market
for counterfeit goods moving to internet based platforms -- recessionary economic
pressures transforming the markets for fashion and luxury goods -- industry trends -counterfeiting trends -- enforcement strategies.
Subject: Luxury goods
Subject: Counterfeiting--fashion and design industry
SNIPER No.: 2013/01830
Author: Khan, Saif
Title: Anti-counterfeiting: India
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
109-113.
Summary: Legal framework -- border measures -- criminal prosecution -- civil
enforcement -- anti-counterfeiting online -- preventative measures and strategies.
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Subject: Counterfeiting--India
Subject: Customs--India
SNIPER No.: 2013/01831
Author: Nasser, Walid
Title: Anti-counterfeiting: Iraq
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
114-118.
Summary: Legal framework -- border measures -- criminal prosecution -- civil
enforcement -- anti-counterfeiting online -- preventative measures and strategies.
Subject: Counterfeiting--Iraq
Subject: Customs--Iraq
SNIPER No.: 2013/01832
Author: Cohen-Zedek, Nachman
Title: Anti-counterfeiting: Israel
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
119-123.
Summary: Legal framework -- border measures -- criminal prosecution -- civil
enforcement -- anti-counterfeiting online -- preventative measures and strategies.
Subject: Counterfeiting--Israel
Subject: Customs--Israel
SNIPER No.: 2013/01833
Author: Galli, Cesare
Title: Anti-counterfeiting: Italy
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
125-130.
Summary: Legal framework -- border measures -- criminal prosecution -- civil
enforcement -- anti-counterfeiting online -- preventative measures and strategies.
Subject: Counterfeiting--Italy
Subject: Customs--Italy
SNIPER No.: 2013/01834
Author: Kurose, Masashi
Title: Anti-counterfeiting: Japan
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
131-136.
Summary: Legal framework -- border measures -- criminal prosecution -- civil
enforcement -- anti-counterfeiting online -- preventative measures and strategies.
Subject: Counterfeiting--Japan
Subject: Customs--Japan
SNIPER No.: 2013/01835
Author: Anohin, Vladimir
Title: Anti-counterfeiting: Latvia
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Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
137-142.
Summary: Legal framework -- border measures -- criminal prosecution -- civil
enforcement -- anti-counterfeiting online -- preventative measures and strategies.
Subject: Counterfeiting--Latvia
Subject: Customs--Latvia
SNIPER No.: 2013/01836
Author: Nasser, Walid
Title: Anti-counterfeiting: Lebanon
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
143-147.
Summary: Legal framework -- border measures -- criminal prosecution -- civil
enforcement -- anti-counterfeiting online -- preventative measures and strategies.
Subject: Counterfeiting--Lebanon
Subject: Customs--Lebanon
SNIPER No.: 2013/01837
Author: Abraham, Karen
Title: Anti-counterfeiting: Malaysia
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
148-153.
Summary: Legal framework -- border measures -- criminal prosecution -- civil
enforcement -- anti-counterfeiting online -- preventive measures / strategies.
Subject: Counterfeiting--Malaysia
Subject: Customs--Malaysia
SNIPER No.: 2013/01838
Author: Amaro, Juan Carlos
Title: Anti-counterfeiting: Mexico
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
154-158.
Summary: Legal framework -- border measures -- criminal prosecution -- civil
enforcement -- anti-counterfeiting online -- preventive measures / strategies.
Subject: Counterfeiting--Mexico
Subject: Customs--Mexico
SNIPER No.: 2013/01839
Author: Berendschot, Huib
Title: Anti-counterfeiting: Netherlands
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
159-164.
Summary: Legal framework -- border measures -- criminal prosecution -- civil
enforcement -- anti-counterfeiting online -- preventive measures / strategies.
Subject: Counterfeiting--Netherlands
Subject: Customs--Netherlands
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SNIPER No.: 2013/01840
Author: Rzažewska, Dorota
Title: Anti-counterfeiting: Poland
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
165-176.
Summary: Legal framework -- border measures -- criminal prosecution -- civil
enforcement -- anti-counterfeiting online -- preventive measures / strategies.
Subject: Counterfeiting--Poland
Subject: Customs--Poland
SNIPER No.: 2013/01841
Author: Cruz, Nuno
Title: Anti-counterfeiting: Portugal
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
171-176.
Summary: Legal framework -- border measures -- criminal prosecution -- civil
enforcement -- anti-counterfeiting online -- preventive measures / strategies.
Subject: Counterfeiting--Portugal
Subject: Customs--Portugal
SNIPER No.: 2013/01842
Author: Vilau, Dragos M.
Title: Anti-counterfeiting: Romania
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
177-181
Summary: Legal framework -- border measures -- criminal prosecution -- civil
enforcement -- anti-counterfeiting online -- preventive measures / strategies.
Subject: Counterfeiting--Romania
Subject: Customs--Romania
SNIPER No.: 2013/01843
Author: Solovyova, Elena
Title: Anti-counterfeiting: Russia
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
182-187.
Summary: Legal framework -- border measures -- criminal prosecution -- civil
enforcement -- anti-counterfeiting online -- preventive measures / strategies.
Subject: Counterfeiting--Russia
Subject: Customs--Russia
SNIPER No.: 2013/01844
Author: Khader, Mohamed
Title: Anti-counterfeiting: South Africa
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
188-193.
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Summary: Legal framework -- border measures -- criminal prosecution -- civil
enforcement -- anti-counterfeiting online -- preventive measures / strategies.
Subject: Counterfeiting--South Africa
Subject: Customs--South Africa
SNIPER No.: 2013/01845
Author: Fàbrega Sabaté, Xavier
Title: Anti-counterfeiting: Spain
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
194-199.
Summary: Legal framework -- border measures -- criminal prosecution -- civil
enforcement -- anti-counterfeiting online -- preventive measures / strategies.
Subject: Counterfeiting--Spain
Subject: Customs--Spain
SNIPER No.: 2013/01846
Author: Widmer, Michael
Title: Anti-counterfeiting: Switzerland
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
200-205.
Summary: Legal framework -- border measures -- criminal prosecution -- civil
enforcement -- anti-counterfeiting online -- preventive measures / strategies.
Subject: Counterfeiting--Switzerland
Subject: Customs--Switzerland
SNIPER No.: 2013/01847
Author: Pakharenko, Alexander
Title: Anti-counterfeiting: Ukraine
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
206-211.
Summary: Legal framework -- border measures -- criminal prosecution -- civil
enforcement -- anti-counterfeiting online -- preventive measures / strategies.
Subject: Counterfeiting--Ukraine
Subject: Customs--Ukraine
SNIPER No.: 2013/01848
Author: Dickerson, Jeremy
Title: Anti-counterfeiting: United Kingdom
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
212-217.
Summary: Legal framework -- border measures -- criminal prosecution -- civil
enforcement -- anti-counterfeiting online -- preventive measures / strategies.
Subject: Counterfeiting--United Kingdom
Subject: Customs--United Kingdom
SNIPER No.: 2013/01849
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Author: Schonfeld, Mark
Title: Anti-counterfeiting: United States
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
218-223.
Summary: Legal framework -- border measures -- criminal prosecution -- civil
enforcement -- anti-counterfeiting online -- preventive measures / strategies.
Subject: Counterfeiting--United States
Subject: Customs--United States
SNIPER No.: 2013/01850
Author: Polanco, Manuel F.
Title: Anti-counterfeiting: Venezuela
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
229-234.
Summary: Legal framework -- border measures -- criminal prosecution -- civil
enforcement -- anti-counterfeiting online -- preventive measures / strategies.
Subject: Counterfeiting--Venezuela
Subject: Customs--Venezuela
SNIPER No.: 2013/01851
Author: Nguyen, Tuan A.
Title: Anti-counterfeiting: Vietnam
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
229-234.
Summary: Legal framework -- border measures -- criminal prosecution -- civil
enforcement -- anti-counterfeiting online -- preventive measures / strategies.
Subject: Counterfeiting--Vietnam
Subject: Customs--Vietnam
SNIPER No.: 2013/01722
Author: Peng, Meixiang
Title: Application of Article 24(3) of the Patent Law viewed from legislative aim
Source: China Patents and Trademarks. Vol. 113 No. 2, April 2013, pp. 46-51.
Summary: Patent disclosure and novelty -- grace periods -- China -- aim of Article 24(3)
-- invalidation of design patent (200430088722.4) for a vehicle -- issues surrounding
grace periods -- whether claim for grace periods can be filed during invalidation
proceedings -- how grace period claims are to be filed -- determining dates -- disclosure
without consent.
Subject: Grace periods--China
SNIPER No.: 2013/01810
Author: Denman, Gayle J.
Title: Apprentice boss trumps cybersquatter in domain name dispute
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 3, March 2013, pp. 52.
Summary: Use of famous names in URLs can lead to an increase in website traffic -- IP
infringement over the use of internet domain names -- J Taikwok Yung (conducting
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business under the name Web-adviso) registered trumpmumbai.com and other similar
domain names -- New York Federal Court ruled in favour of Donald Trump over the
unauthorised use of his name -- Anti-Cybersquatting Consumer Protection Act (the
ACPA) -- violation of the ACPA -- bad faith intent -- decision highlights continuing trend
toward heightened protection of celebrity names from alleged cybersquatters by WIPO
and others.
Subject: Domain name registration--United States
Subject: Trade mark enforcement--United States
SNIPER No.: 2013/01853
Author: Markellou, Marina P.
Title: Appropriation art under copyright protection: recreation or speculation?
Source: European Intellectual Property Review. Vol. 35 No. 7, 2013, pp. 369-372.
Summary: Possibilities and pitfalls connected with the creative use of pre-existing
images -- appropriation, creativity and collaborative practices -- France a broader
interpretation of postmodern artistic creation -- United States judicial unpredictability
towards post-modern artistic creation -- objective conception of originality.
Subject: Copyright owners' rights
SNIPER No.: 2013/01597
Author: Walsh, Catherine
Title: Are personality rights finally on the UK agenda?
Source: European Intellectual Property Review. Vol. 35 No. 5, 2013, pp. 253-260.
Summary: Recent developments of the expansion of passing off, trade mark law and
the breach of confidence action -- recognition of personality rights by way of passing off
-- trade marks designed to protect against consumer confusion and deception as to
trade origin -- commercial practice in the football industry of "image rights" contracts -impact of the internet on personality rights -- impact that the recent recognition of
personality rights online by the CJEU in Oliver Martinez v MGN Ltd has for the UK -developments indicate that the long resisted recognition of personality rights may finally
be on the agenda.
Subject: Passing-off--United Kingdom
Subject: Personality rights--case law--Europe
Subject: Intellectual property law--reform--United Kingdom
SNIPER No.: 2013/00160
Author: Vézina, Brigitte
Title: Are they in or are they out?: traditional cultural expressions and the public
domain: implications for trade
Source: Graber, Christoph B., et al. (eds.), International trade in indigenous cultural
heritage: legal and policy issues. Cheltenham, U.K.: Edward Elgar, 2012. pp. 196-220.
Summary: Traditional cultural expressions (TCEs) -- tokens of a community's identity,
cultural continuity and living heritage -- TCEs have commercial potential and may be
traded across borders, across oceans and beyond their cultural context -- trade in TCEs
does not indirectly, let alone directly, involve the holder(s) of the TCE -- recent
developments at the World Intellectual Property Organization (WIPO) -- IP protection
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currently available for TCEs -- focusing on performers' rights in expressions of folklore -meaning of the 'public domain' -- whether TCEs are in or are out of the public domain -establishment of an international sui generis system -- protection of public domain TCEs
-- implications, consequences or impact of these possibilities for the tradability of TCEs.
Subject: Traditional cultural expressions
Subject: Public domain
Subject: Trade
SNIPER No.: 2013/01735
Author: Marks, Benjamin E.
Title: The artful dodger
Source: Intellectual Property Magazine. July-August 2013, pp. 17-18.
Summary: United States Second Circuit -- reversed in part and remanded in part a
district court's determination -- that well-known appropriation artist Richard Prince,
infringed Patrick Cariou's copyrights when he used Cariou's photographs in a series of
collages -- background to the case -- the fair use doctrine -- Southern District of New
York decision -- the Second Circuit decision -- key takeaway messages.
Subject: Fair use (Copyright)--case law--United States
Subject: Copyright infringement--case law--United States
SNIPER No.: 2013/01800
Author: Mirandah, Gladys
Title: ASEAN members benefit from PPH membership
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 4, April 2013, pp. 39-41.
Summary: Patent Prosecution Highway (PPH) offers an alternative route to fast-track
patent examination in countries such as Singapore and the Philippines -- history of the
PPH in ASEAN -- PPH in Singapore -- PPH in the Philippines -- advantages and
disadvantages of PPH -- hopeful more ASEAN member countries will join the PPH
network in the years to come.
Subject: Patent examination--procedure--Philippines
Subject: Patent examination--procedure--Singapore
Subject: Patent processing--Philippines
Subject: Patent processing--Singapore
SNIPER No.: 2013/01661
Author: Monroig, Miyuki
Title: Asia drives the transformation of the global patent economy
Source: Intellectual Asset Management. No. 60, July/August 2013, pp. 26-34.
Summary: Rise of patent economies in Asia -- accelerated participation in the global
patent market -- patent filings -- strengthening legal and judicial patent frameworks -increased investment in education and research -- political will to encourage innovation
-- integration of intellectual property into public education -- new public-private initiatives
-- development and future possibilities for patent funds -- future developments -- turning
point for the patent economy -- Japan -- Korea -- Taiwan -- China.
Subject: Patents--economics--Asia
Subject: Economic development--trends--Asia
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Subject: Intellectual property awareness--trends--Asia
SNIPER No.: 2013/00228
Author: He, Huaiwen
Title: Assessing inventiveness in patent invalidation procedure: comments on Wellman
Corp. v. PRB, Shuanghe Corp., Supreme People's Court's Judgment No. Xingtizi
8/2011
Source: China Patents and Trademarks. Vol. 111 No. 4 October 2012, pp. 7-11.
Summary: Patent Reexamination Board (PRB) declare the pharmaceutical patent
invalid on the ground that claim 1 was not novel or inventive -- Supreme People's Court
(SPC) has selected to provide persuasive guidance for lower courts -- inventiveness
should be assessed in light of the technical solution or effect as disclosed in the
description -- no legal provision for any direct legal relationship between inventiveness
and the description.
Subject: Patent validity--pharmaceutical industry--China
SNIPER No.: 2013/01775
Added author: Australia. Department of Industry, Innovation, Science, Research and
Tertiary Education
Added author: Australian Research Council
Title: Assessing the wider benefits arising from university based research: discussion
paper
Source: Assessing the Wider Benefits Arising From University Based Research. June
2013.
Summary: Maximise the public benefits from publicly funded research -- The
Department of Industry, Innovation, Climate Change, Science, Research and Tertiary
Education and the Australian Research Council -- seeking views of interested parties
regarding a future assessment of the benefits arising from university based research -broader, economic, social and environmental benefits -- approaches to assessing
benefits -- national survey of research commercialisation -- AusPAT data -- research
benefit case studies -- examples of possible metrics.
Subject: Technology transfer--research--United Kingdom
Subject: Business collaboration--research--United Kingdom
SNIPER No.: 2013/00157
Author: Frankel, Susy
Title: Attempts to protect indigenous culture through free trade agreements
Source: Graber, Christoph B., et al. (eds.), International trade in indigenous cultural
heritage: legal and policy issues. Cheltenham, U.K.: Edward Elgar, 2012. pp. 118-143.
Summary: Fundamental purpose of most modern free trade agreements (FTAs) -World Trade Organization (WTO) -- protection of traditional knowledge and traditional
cultural expressions (TCEs) are not specifically part of the WTO framework -- in
particular the Agreement on Trade-Related Aspects of Intellectual Property Rights
(TRIPS Agreement) -- how FTAs might affect the aspirations of indigenous peoples -problems that have led to a call for the protection of traditional knowledge -international agreements that provide varying protection for traditional knowledge -- 15 -
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issues arising from the implementation of those international agreements in domestic
law -- general approach that FTAs take when they include clauses about protection of
cultural heritage -- specific examples of clauses from FTAs -- purpose and legitimacy of
protecting traditional knowledge through FTAs -- no creation, through FTAs, of norms
for the protection of traditional knowledge -- consequences if such norms were
developed through FTAs -- countries who wish to protect traditional knowledge do not at
present use FTAs effectively for that purpose.
Subject: Traditional cultural expressions
Subject: Free trade
SNIPER No.: 2013/01287
Author: Walker, John
Title: Aussie rules: licensing patents Down Under
Source: World Intellectual Property Review. March-April 2013, pp. 36-37.
Summary: Patent entitlement -- due diligence -- joint ownership -- only the patentee or
exclusive licensee has the right to bring infringement proceedings -- void licence terms
and trade practices.
Subject: Intellectual property licensing--Australia
Subject: Patent ownership--Australia
SNIPER No.: 2013/01973
Author: Papadopoulos, Mary
Title: Australian court holds use of photographs by book publisher infringed copyright
Source: World Intellectual Property Report. Vol. 27 No. 8, August 2013, pp. 46-48.
Summary: Photographs reproduced in a biography of Schapelle Corby -- infringed
copyright of the relatives of the subject of the biography -- Federal Court of Australia
decision in Corby v Allen & Unwin Pty Limited -- facts of the case -- no permission from
the copyright owners to reproduce the photographs -- moral right of attribution of
authorship of the photographs -- compensatory damages -- monetary damages not
awarded for moral rights infringement -- found publisher acted in flagrant disregard of
the rights of the applicants as owners of copyright -- had taken calculated risk -additional damages awarded for copyright infringement
Subject: Copyright infringement--case law--Australia
Subject: Damages--Australia
Subject: Moral rights--case law--Australia
SNIPER No.: 2013/01965
Author: IP Australia
Title: Australian intellectual property report 2013
Source: Australian Intellectual Property Report. 2013.
Summary: IP applications in Australia -- patents -- design rights -- plant breeder's rights
-- trade marks -- Australians filing overseas -- state of play in Australia -- IP and
innovation in Australia -- major Australian reforms -- a new research program.
Subject: IP Australia
Subject: Intellectual property--statistics--Australia
Subject: Patents--statistics--Australia
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Subject: Trade marks--statistics--Australia
Subject: Copyright--statistics--Australia
Subject: Industrial designs--statistics--Australia
SNIPER No.: 2013/02040
Author: Seisdedos, Joe
Title: Australian medical devices and the power of patent data
Source: Australasian Biotechnology. Vol. 21 No. 2, June 2011, pp. 50-51.
Summary: This article builds on a white paper published by Griffith Hack in June 2010,
entitled "Mind the Gap: Medical Technology Innovation in Australia”.
Summary: Patent filings in the medical device area -- focus on Australian patent filings
-- example of how patent data can be utilised to glean a wide range of knowledge -market intelligence -- technical solutions -- a rich source of data -- information regarding
the commercial strategy of competitors and their research direction -- exploring the gaps
-- niche areas for Australian investors -- veterinary science not exploited enough in
Australia -- unclear if research in these industries is being translated into patented
inventions -- Australian companies Cochlear and ResMed have had some success on a
global scale.
Subject: Patent filing--biotechnology industry--Australia
SNIPER No.: 2013/01861
Author: Bicknell, Paul
Title: Aveda Corp v Dabur India Ltd: the High Court finds a likelihood of confusion
between Dabur Uveda and Aveda
Source: European Intellectual Property Review. Vol. 35 No. 7, 2013, pp. 424-425.
Summary: Considers the decision in Aveda Corp v Dabur India Ltd -- extension of the
application of Medion v Thomson -- composite marks -- composite sign where part of
that sign includes a sign that is similar to a third party's company name -- Aveda and
Dabur Uveda -- Drillisch Alphatel and Alcatel -- High Court's application of Medion -strong movement towards applying the Median logic to composite signs that contain a
sign that is similar (as opposed to identical) to another's sign.
Subject: Confusing similarity--Europe
Subject: Trade mark infringement--case law--Europe
SNIPER No.: 2013/01777
Author: Bakhoum, Mor
Added author: Max-Planck-Institut für Immaterialgüter- und Wettbewerbsrecht
Title: Balancing "incentive to innovate" and "protection of competition" an African
perspective on IPRs and competition law
Source: Max Planck Institute for Intellectual Property and Competition Law Research
Paper. No. 13-11, 27 May 2013.
General Note: Also published in: Okediji, Ruth (ed.), Global Perspectives on Intellectual
Property Law, Oxford University Press, 2013.
Summary: Interface between competition and intellectual property law -- South Africa -essential facilities doctrine -- legal challenges -- GlaxoSmith-Kline/Boehringer Ingelheim
case -- innovation versus access -- price competition versus innovation -- interface
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between promoting innovation and protecting competition in international law -- TRIPS
competition provisions -- discrepancy between IP protection and freedom to compete -role of competition law in innovation -- better addressing IP-related restrictions of
competition in Sub-Saharan Africa.
Subject: Competition law--Africa
Subject: Intellectual property rights--Africa
SNIPER No.: 2013/01400
Author: Soni, Pankaj
Title: Balancing patent monopoly and public good
Source: World Intellectual Property Review. Annual, 2013, pp. 70-71.
Summary: Compulsory licence awarded in India for cancer drug Nexavar -- extreme
reactions for all sectors -- sanctity of the price offered by the licensee -- compulsory
licensing about public interest -- share of profits for the public good -- impaired
commercialisation -- framework fundamentally weakens patent protection -- innovate or
copy -- right price.
Subject: Compulsory licensing--India
Subject: Pharmaceutical industry--India
SNIPER No.: 2013/01573
Author: Afori, Orit Fischman
Title: The battle over public e-libraries: taking stock and moving ahead
Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 44
No. 4, June 2013, pp. 392-417.
Summary: Role of public e-libraries information intermediaries -- threat to ability of
public e-libraries to fulfill their function -- purchasing licences to electronic resources -common practice in which licences restrict uses otherwise permitted by copyright law -clash between restrictive contracts and policy underlying intellectual property -- need for
international special mandatory exceptions for public e-libraries -- justifications for a
specially tailored rule for public and academic libraries -- use of UNESCO to promote
libraries' agenda
Subject: Fair use (Copyright)--knowledge industry
Subject: Copyright licensing--knowledge industry
Subject: Libraries
SNIPER No.: 2013/01092
Author: Jumadla, Anne Mariae Celeste
Title: Beware of sharks: similarity of marks in the Philippines
Source: World Intellectual Property Review. January-February 2013, p. 65.
Summary: Decision involving two trade marks comprising representations of a shark -opposition proceeding was lodged by Great White Shark Enterprises Inc against Danilo
Caralde -- Bureau of Legal Affairs (BLA) and the Office of the Director General (ODG) of
the Intellectual Property Office of the Philippines both found confusing similarity
between the two marks -- Supreme Court of the Philippines and the Court of Appeals
reversed this ruling -- distinct visual and aural differences between the two marks.
Subject: Confusing similarity--case law--Philippines
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Subject: Trade mark opposition--case law--Philippines
SNIPER No.: 2013/01874
Author: Wine, Mark
Title: Beyond Tianrui v ITC: how far will US courts go?
Source: World Intellectual Property Review. May-June 2013, pp. 32-35.
Summary: TianRui Group Co Ltd v US International Trade Commission (ITC) -- trade
secret misappropriation -- Federal Circuit affirmed the ITC's jurisdiction over matters
involving trade secret misappropriation, even in cases where the misappropriation
occurs entirely overseas -- understanding the potential reach of the decision's reasoning
-- any foreign business practice that creates unfavourable prices or competition in the
US could constitute unfair competition and is at risk of being excluded from importation
into the US -- unfair competition also could encompass extraterritorial antitrust or
corruption actions -- how to avoid potential liability.
Subject: Competition (Economics)--United States
Subject: Trade secrets--United States
Subject: Legal jurisdiction--United States
SNIPER No.: 2013/01292
Author: Carrington, Victoria E.
Title: Bill C-56 sneaks in changes to the Trade-Marks Act
Source: World Intellectual Property Review. March-April 2013, p. 49.
Summary: Federal government seeks to bring Canada in line with the requirements of
the Anti-Counterfeiting Trade Agreement (ACTA) -- introducing Bill C-56-the Combating
Counterfeit Products Act -- purpose of Bill C-56 is to add new civil and criminal
remedies for trade mark and copyright owners whose rights are infringed by commercial
counterfeiting activities -- government is also cleaning up some procedural problems
with the Trade-marks Act -- expanding the scope of registrable trade marks -- proposed
changes -- anti-counterfeiting provisions of Bill C-56.
Subject: Trade marks--reform--Canada
Subject: Counterfeiting--law and legislation--Canada
SNIPER No.: 2013/01730
Author: Aziz, Khurram
Title: Biological warfare
Source: Intellectual Property Magazine. July-August 2013, pp. 8-9.
Summary: United States Supreme Court ruling -- Association for Molecular Pathology v
Myriad Genetics -- ruling to ban the patenting of human genes -- past decisions -history of the case -- impact of the decision on biotechnology research -- potentially
opens up the market for "gene chips" -- ruling against Myriad in the Federal Court of
Australia -- attorney opinion.
Subject: Patentability--case law--United States
Subject: Genes--patentability--United States
SNIPER No.: 2013/01805
Author: Qu, Mia
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Title: Biomeds and outsourcing to China
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 3, March 2013, pp. 4144.
Summary: Popularity of China as an outsourcing destination -- intellectual property
issues related to biomedical outsourcing in the Chinese context -- types of outsourcing
and respective legal relationships -- IP issues pertinent to the outsourcing relationship -commissioned development contracts -- cooperative development contracts -- technical
consultancy and service contracts -- statutory rights of contract research organisation
(CRO) employees -- CRO's cooperative units and their staff -- independent contractors - former employees -- protection and management of IP -- choosing a method to protect
technical achievements -- preventing leaks of confidential information by CROs -constructing patent applications with a global vision -- technological monopolies -technology import/export control.
Subject: Outsourcing--Malaysia
Subject: Biotechnology industry--Malaysia
SNIPER No.: 2013/01680
Author: Tuxworth, Pamela
Title: Biotechnology patentability: the latest from the EPO
Source: Intellectual Asset Management. Patents in Europe 2013/2014, 2013, pp. 3741.
Summary: Biotechnology patents -- European Patent Office (EPO) -- therapeutic
monoclonal antibodies -- stem cells -- plant biotechnology and breeding -- exclusions
from patentability.
Subject: European Patent Office--procedure
Subject: Biotechnology--patentability--Europe
Subject: Patents--biotechnology industry--Europe
SNIPER No.: 2013/01751
Author: Shelton, Brian K.
Title: Blind leading the blind
Source: Intellectual Property Magazine. July-August 2013, pp. 53-54.
Summary: Deliberate indifference standard for inducement of patent infringement -replaced by the criminal law concept of willful blindness -- courts accepting evidence of
willful blindness as an alternative of direct knowledge of infringing acts -- extensive body
of criminal jurisprudence can provide guidance -- Global-Tech and the 'willful blindness'
doctrine -- boundaries of the new willful blindness standard -- seeking parallels from
criminal jurisprudence -- US v Yi -- United States v Anthony -- implications going
forward.
Subject: Patent infringement--case law--United States
Subject: Criminal law--United States
SNIPER No.: 2013/01796
Author: Khan, Saif
Title: Border enforcement measures in India
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 4, April 2013, pp. 25-27.
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Summary: Intellectual property rights holders in India able to enforce their rights at the
border -- laws modelled on those suggested by the World Customs Organization --rules
empower the Customs authorities to suspend the clearance of import of goods
suspected to be infringing intellectual property into India -- registration process -registration of the notice or customs recordal -- a general bond without security -- a
centralised bond valid for all ports of import -- suspension of imported goods suspected
to be infringing goods -- destruction costs borne by the right holder.
Subject: Counterfeiting--India
Subject: Customs--India
SNIPER No.: 2013/01402
Author: Dolde, Tobias
Title: A bright future: changes to the European Trademark System
Source: World Intellectual Property Review. Annual, 2013, pp. 80-81.
Summary: Challenge for EU legislators and Office for Harmonization in the Internal
market (OHIM) to bring rules and procedures of the Community Trademark System
(CTM) up to speed -- how well is the CTM system working -- does the OHIM process
CTMs efficiently -- improvements could be made at OHIM -- will the
proposed EC changes to the trade mark system boost convergence between national
offices and OHIM -- two proposals will have the biggest practical impact on trade mark
owners -- future of the CTM/European Trademark System.
Subject: Community Trade Mark
Subject: Trade marks--law and legislation--Europe
Subject: Trade mark applications--Europe
SNIPER No.: 2013/01741
Author: Corless, Peter F.
Title: Brought to heal
Source: Intellectual Property Magazine. July-August 2013, pp. 32-33.
Summary: Global Use of Medicines: Outlook Through 2016 report -- emerging
countries will double their spending on pharmaceuticals over the next five years -important to think of the medicines made available for these countries with regard to the
shift in types of diseases to be treated, as well as cost point and accessibility -- practical
concerns of conducting clinical trials in countries that have different markets -- access is
a challenge seen across all emerging markets -- the situation in India -- strategy for
pharmaceutical companies -- geographic location for drug development -- benefits of
including emerging markets in trials for new drugs -- how pharmaceutical companies
can build their emerging market presence -- focus of research and development may
shift to diseases more prevalent in an emerging market -- competing with 'branded
generics' -- partnering with local companies.
Subject: Pharmaceuticals
Subject: Marketing
SNIPER No.: 2013/01773
Author: Clark, Birgit
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Title: Bundesgerichtshof decides in Zappa trade mark dispute: German Federal Court
of Justice (Bundesgerichtshof), I ZR 135/10 'Zappa' of 31 May 2012
Source: Queen Mary Journal of Intellectual Property. Vol. 3 No. 3, September 2013, pp.
267-272.
Summary: Enforcement of trade mark rights of a deceased celebrity -Bundesgerichtshof ruled that neither use of the domain name 'zappa.com', nor use of
the sign 'Zappa Records' was sufficient to prove genuine use of the trade mark ZAPPA
under Articles 15 (1), (2a) EC Regulation 40/94 -- heirs of the famous musician Frank
Zappa cannot prevent a German music festival from calling itself 'Zappanale' -- legal
and factual background -- genuine use of the Community trade mark ZAPPA -- use of
the moustache device mark -- comment and practical significance.
Subject: Personality rights--case law--Germany
Subject: Trade mark use--case law--Germany
Subject: Trade mark distinctiveness--Germany
SNIPER No.: 2013/01411
Author: Smith Millar, Rosalind
Title: Business brief: Barbados
Source: World Intellectual Property Review. Annual, 2013, pp. 112-113.
Summary: Patents protection and enforcement in Barbados -- trade marks registration
and protection -- threats to owners and remedies -- common mistakes -- copyright -keys threats to rights owners -- counterfeiting and piracy -- recent changes in the laws.
Subject: Patent applications--Barbados
Subject: Trade mark applications--Barbados
Subject: Intellectual property rights--Barbados
SNIPER No.: 2013/01412
Author: Romero, Erienne A. N.
Title: Business brief: Belize
Source: World Intellectual Property Review. Annual, 2013, pp. 114-115.
Summary: National patent rights -- patent costs -- patent searches -- TRIPS -- patent
disputes rare in Belize -- registering trade marks -- trade mark costs -- infringement -counterfeit goods -- anti-counterfeiting strategies.
Subject: Patent applications--Belize
Subject: Trade mark applications--Belize
Subject: Intellectual property rights--Belize
SNIPER No.: 2013/01413
Author: Rechardt, Lauri
Title: Business brief: Finland
Source: World Intellectual Property Review. Annual, 2013, pp. 116-117.
Summary: National patent rights -- patent costs -- patent searches -- registering trade
marks -- trade mark costs -- infringement -- counterfeit goods -- anti-counterfeiting
strategies -- online piracy.
Subject: Patent applications--Finland
Subject: Trade mark applications--Finland
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Subject: Intellectual property rights--Finland
SNIPER No.: 2013/01414
Author: Cohausz & Florack
Title: Business brief: Germany
Source: World Intellectual Property Review. Annual, 2013, pp. 118-119.
Summary: National patent rights -- patent costs -- patent searches -- registering trade
marks -- trade mark costs -- infringement -- counterfeit goods -- anti-counterfeiting
strategies -- online piracy.
Subject: Patent applications--Germany
Subject: Trade mark applications--Germany
Subject: Intellectual property rights--Germany
SNIPER No.: 2013/01415
Author: Chowdhury, Mahua Roy
Title: Business brief: India
Source: World Intellectual Property Review. Annual, 2013, pp. 120-121.
Summary: National patent rights -- patent costs -- patent searches -- registering trade
marks -- trade mark costs -- infringement -- counterfeiting -- copyright costs.
Subject: Patent applications--India
Subject: Trade mark applications--India
Subject: Intellectual property rights--India
SNIPER No.: 2013/01416
Author: Maruyama, Ryo
Title: Business brief: Japan
Source: World Intellectual Property Review. Annual, 2013, pp. 122-123.
Summary: National patent rights -- patent costs -- patent searches -- registering trade
marks -- trade mark costs -- infringement -- counterfeiting -- copyright costs.
Subject: Patent applications--Japan
Subject: Trade mark applications--Japan
Subject: Intellectual property rights--Japan
SNIPER No.: 2013/01417
Author: Abraham, Karen
Title: Business brief: Malaysia
Source: World Intellectual Property Review. Annual, 2013, pp. 124-125.
Summary: National patent rights -- patent costs -- patent searches -- registering trade
marks -- trade mark costs -- infringement -- copyright costs.
Subject: Patent applications--Malaysia
Subject: Trade mark applications--Malaysia
Subject: Intellectual property rights--Malaysia
SNIPER No.: 2013/01418
Author: Trigueros, José Ramón
Title: Business brief: Mexico
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Source: World Intellectual Property Review. Annual, 2013, pp. 125-127.
Summary: National patent rights -- patent costs -- patent searches -- registering trade
marks -- trade mark costs -- infringement -- copyright costs -- counterfeiting -- anticounterfeiting measures.
Subject: Patent applications--Mexico
Subject: Trade mark applications--Mexico
Subject: Intellectual property rights--Mexico
SNIPER No.: 2013/01419
Author: Grant, Tyron
Title: Business brief: South Africa
Source: World Intellectual Property Review. Annual, 2013, pp. 128-129.
Summary: National patent rights -- patent costs -- patent searches -- registering trade
marks -- trade mark costs -- infringement -- copyright costs -- counterfeiting.
Subject: Patent applications--South Africa
Subject: Trade mark applications--South Africa
Subject: Intellectual property rights--South Africa
SNIPER No.: 2013/01420
Author: Wanigasekera, Anomi
Title: Business brief: Sri Lanka
Source: World Intellectual Property Review. Annual, 2013, pp. 130-131.
Summary: National patent rights -- patent costs -- patent searches -- registering trade
marks -- trade mark costs -- infringement -- copyright costs -- counterfeiting.
Subject: Patent applications--Sri Lanka
Subject: Trade mark applications--Sri Lanka
Subject: Intellectual property rights--Sri Lanka
SNIPER No.: 2013/01421
Author: Zamkova, Maria
Title: Business brief: Sweden
Source: World Intellectual Property Review. Annual, 2013, pp. 132-133.
Summary: National patent rights -- patent costs -- patent searches -- registering trade
marks -- trade mark costs -- infringement -- copyright costs -- counterfeiting.
Subject: Patent applications--Sweden
Subject: Trade mark applications--Sweden
Subject: Intellectual property rights--Sweden
SNIPER No.: 2013/01422
Author: Yasaman, Hamdi
Title: Business brief: Turkey
Source: World Intellectual Property Review. Annual, 2013, pp. 134-135.
Summary: National patent rights -- patent costs -- patent searches -- registering trade
marks -- trade mark costs -- infringement -- copyright costs -- counterfeiting.
Subject: Patent applications--Turkey
Subject: Trade mark applications--Turkey
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Subject: Intellectual property rights--Turkey
SNIPER No.: 2013/01423
Author: Simpson, Alison
Title: Business brief: UK
Source: World Intellectual Property Review. Annual, 2013, pp. 136-137.
Summary: National patent rights -- patent costs -- patent searches -- registering trade
marks -- trade mark costs -- infringement -- copyright costs -- counterfeiting.
Subject: Patent applications--United Kingdom
Subject: Trade mark applications--United Kingdom
Subject: Intellectual property rights--United Kingdom
SNIPER No.: 2013/01424
Author: Nebreda, María Milagros
Title: Business brief: Venezuela
Source: World Intellectual Property Review. Annual, 2013, pp. 138-139.
Summary: National patent rights -- patent costs -- patent searches -- registering trade
marks -- trade mark costs -- infringement -- copyright costs -- counterfeiting -- online
piracy.
Subject: Patent applications--Venezuela
Subject: Trade mark applications--Venezuela
Subject: Intellectual property rights--Venezuela
SNIPER No.: 2013/01093
Author: Orlova, Valentina
Title: A busy year for pharma
Source: World Intellectual Property Review. January-February 2013, p. 66.
Summary: Russia's accession to the World Trade Organization (WTO) -- intellectual
property (IP) legislation had already been fully brought into conformity with minimum
contained in the Agreement on the Trade-related Aspects of IP Rights (TRIPS) -- range
of issues need additional legal regulation -- protecting data exclusivity -- restricting the
ability to patent methods of treatment -- relationship between trade marks and
international non-patent names (INNs).
Subject: Intellectual property law--reform--Russia
Subject: Pharmaceuticals--Russia
SNIPER No.: 2013/01397
Author: Solovyova, Elena
Title: Call the specialists: IP Court prepares to launch
Source: World Intellectual Property Review. Annual, 2013, pp. 58-61.
Summary: Specialised court for IP disputes in the Russian Federation -- creation of the
court within the arbitrazh court -- currently many judges in Russia possess a traditional
higher legal education and do not have an extensive technical background -- IP court to
include a staff of offsite specialists and experts -- judge criteria -- rights holders,
specialists and practitioners should consider creating a legal strategy to use the new
legal opportunities of the IP court
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Subject: Litigation--reform--Russia (Federation)
Subject: Intellectual property--reform--Russia (Federation)
Subject: Legal procedure--Russia (Federation)
SNIPER No.: 2012/01798
Author: Roffe, Pedro
Title: Canada: patent protection of pharmaceutical products
Source: Correa, Carlos M. (ed.), Research handbook on the interpretation and
enforcement of intellectual property under WTO rules. Cheltenham, U.K.: Edward Elgar,
2010. pp. 237-282.
Summary: Canada -- patent protection of pharmaceuticals case -- decided by a World
Trade Organization (WTO) panel -- European Communities as the main complainant
and Canada as respondent -- compatibility of the Canadian Patent Law regarding the
protection of inventions in the area of pharmaceuticals with Articles 27, 28 and 30 of the
Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS) -- wide
scope of the Canadian regulatory review exception as considered by the Panel -- the
decision of the Panel, the issues under consideration and its main findings and
conclusions -- implications and relevance of the case -- effects for generic producers -effects for national law making.
Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994
April 15)
Subject: Patents--law and legislation--Canada
Subject: Patents--pharmaceutical industry--Canada
Subject: Patent litigation--case law--Canada
SNIPER No.: 2013/01081
Author: Carrington, Victoria E.
Title: Canada's internet goes bilingual
Source: World Intellectual Property Review. January-February 2013, p. 54.
Summary: Canadian Internet Registration Authority (CIRA) -- .ca registry now supports
the use of the full range of French characters in .ca domain names -- Francophone
Internet users previously had no choice but to register French words without the benefit
of the accented letters or ligatures -- advantages of being able to register domain
names that correspond exactly to trademarks and business names in Canada's official
languages -- meteoric rise in popularity of Canada's national domain name space -impact on trade mark owners -- increased potential for infringement and misuse.
Subject: Domain name registration--reform--Canada
Subject: Internet--Canada
SNIPER No.: 2013/01972
Author: Johnson, Lee A.
Title: Canadian Patent Office issues Practice Notice regarding medical uses patent
claims
Source: World Intellectual Property Report. Vol. 27 No. 8, August 2013, pp. 45-46.
Summary: Canadian Intellectual Property Office (CIPO) issued Practice Notice
PN2013-04 on 10 June 2013 -- medical use type claims -- directed to use of a
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compound for treatment, use of a compound in the manufacture of a medicament for
treatment, or a compound for use in treatment -- valid if no active treatment or surgical
steps described -- Notice provides patent examiners with specific guidance for
examination of medical use type claims -- purposive claim construction analysis -emphasis on identification of problem inventor addressing and solution disclosed -patentability determined based on nature of "essential" elements
Subject: Medical procedures--patentability--Canada
Subject: Patent examination--procedure--Canada
Subject: Patent claims--Canada
SNIPER No.: 2013/01180
Author: Hartland, Lucy
Title: Cancer Voices Australia v Myriad Genetics Inc
Source: Australian Intellectual Property Law Bulletin. Vol. 25 No. 9, April-May 2013, pp.
191-193.
Summary: Cancer Voices Australia v Myriad Genetics Inc -- patentability of an
"isolated" form of a sequence of naturally occurring nucleic acid -- challenged in the
Federal Court of Australia on the ground that it did not involve a manner of manufacture
within the meaning of s. 18(1)(a) of the Patents Act 1990 (Cth) -- background -procedural history -- judgment -- discussion.
Subject: Genes--patentability--Australia
Subject: Patentability--case law--Australia
SNIPER No.: 2013/01766
Author: McJohn, Stephen M., 1959Title: The case of the missing case: Stewart v. Abend and fair use
Source: IDEA: the Intellectual Property Law Review. Vol. 53 No. 3, 2013, pp. 323-349.
Summary: US Supreme Court cases on fair use frequently discussed -- Sony Corp. of
America v. Universal Studios, Inc. -- Harper & Row, Publishers, Inc. v. Nation
Enterprises -- Campbell v. Acuff-Rose Music, Inc. -- Stewart v. Abend -- Court held that
it was not fair use for the producers of the Alfred Hitchcock film "Rear Window' to
continue showing the film after their rights were terminated in the underlying story -decision rarely appears in analysis of fair use -- should have more prominent role in fair
use jurisprudence -- reasons for Stewart's invisibility in fair use -- very short fair use
discussion -- complexity of Stewart's threshold issues -- rule of three -- tendency of IP
law to have tests or cases in threes -- no representation of Stewart in precedence -how Stewart can contribute to fair use analysis -- application of fair use to licensing
transactions -- definition of relevant markets -- meaning of "fair"
Subject: Fair use (Copyright)--analysis--United States
Subject: Copyright--law and legislation--United States
SNIPER No.: 2013/01082
Author: Gao, Xiang
Title: Changes in China: retail and wholesale services
Source: World Intellectual Property Review. January-February 2013, p. 55.
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Summary: 1Oth edition of the International Classification of Goods and Services for the
Purposes of the Registration of Marks (Nice Classification) -- China Trademark Office
(CTMO) online published a notice concerning preparation for adoption of the new
version -- CTMO has a self-edited Classification of Similar Goods and Services for
Registration of Marks in China -- addition of some Chinese-characteristic goods which
do not appear in the Nice Classification -- some terms in the Nice Classification were
not accepted by the CTMO -- CTMO has now included additional service terms -- patent
filings continue to increase.
Subject: Trade mark classification--reform--China
Subject: Trade mark registration--China
SNIPER No.: 2013/01807
Author: Hey, Georgina
Title: Changes to medicine packaging ahead
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 3, March 2013, pp. 4748.
Summary: Australia -- Therapeutic Goods Administration (TGA) aims to change the
way pharmaceuticals can be labelled to restrict some brand extensions -- review of
packaging and labelling regulations -- new obligations to clear trade marks for use on
new products -- issues for brand owners -- response to review of packaging -prescribed harmonisation of the "look and feel" of packaging.
Subject: Branding--health and community services industry--Australia
Subject: Pharmaceuticals--Australia
SNIPER No.: 2013/01386
Author: Giacopello, Fabio
Title: The Chinese trademark conundrum: will a new law solve the current problems?
Source: World Intellectual Property Review. Annual, 2013, pp. 18-19.
Summary: New draft of the Trademark Law released the National People's Congress,
the Chinese legislative body -- main amendments -- bad faith registrations -enforcement -- administrative fines -- damages calculations -- singe colour signs and
sound marks -- multiclass filing is allowed -- deadlines for appeal extended -examination opinion letter -- concerns about the Chinese trade mark system.
Subject: Trade mark systems--reform--China
SNIPER No.: 2013/01444
Author: Treacy, Pat
Title: CJEU's bitter pill for AstraZeneca
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 6, June 2013, pp.
442-444.
Summary: Court of Justice of the European Union (CJEU) upholds General Court
judgment in AstraZeneca abuse of dominant position case -- AstraZeneca v
Commission -- 'Losec' -- drug to treat stomach ulcers -- Regulation 1768/92 -misrepresentations to patent offices -- voluntary deregistration of marketing
authorizations -- landmark case in abuse of dominance cases.
Subject: Competition (Economics)--case law--Europe
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Subject: Intellectual property abuse--pharmaceutical industry--Europe
SNIPER No.: 2013/01502
Author: Mendis, Dinusha Kishani
Title: "The clone wars": episode 1
Source: European Intellectual Property Review. Vol. 35 No. 3, 2013, pp. 155-169.
Summary: Rise of 3D printing and its implications for IP law -- development of 3D
printing -- advantages outweigh the disadvantages of 3D printing -- sharing culture -personal manufacturing revolution -- cases involving 3D printers and IP rights -- analysis
of the existing IP laws in the UK and their application to 3D printing -- whether the
different strands of IP laws provide the necessary protection for right holders and
manufacturers of 3D products -- implications for the consumer -- lessons learnt from the
past and particularly from the entertainment industry -- online infringement of copyright
law -- important to "adapt" to 3D printing and "adopt" new business models rather than
focus merely on the law -- possible recommendations for the future.
Subject: Intellectual property rights--manufacturing and processing industry
Subject: Industrial designs--manufacturing and processing industry
Subject: Intellectual property law--manufacturing and processing industry--United
Kingdom
SNIPER No.: 2013/01914
Author: Thayer, Linda J.
Title: CLS Bank further muddies the murky waters of patent eligible subject-matter
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of
Patent Agents. Vol. 42 No. 6, June 2013, pp. 321-323.
Summary: Patent claims directed to a computerised trading platform used for
conducting financial transactions -- hoped en banc decision in CLS Bank International v
Alice Corp, No. 11-1301 (Fed. Circ. 2012) would provide much needed clarity -- impact
of the Bilski decision -- patent-eligibility question for software and business method
claims -- opinions of the Federal Circuit judges -- the United States Patent and
Trademark Office (USPTO) interpretation of CLS Bank.
Subject: Computer-related inventions--patentability--United States
Subject: Computer-related inventions--case law--United States
SNIPER No.: 2013/01813
Author: Johnson, Travis
Title: Collaborative efforts to combat IP crime
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
18-21.
Summary: Move away from the traditional distribution of counterfeit goods -counterfeiters increasingly moving online -- trade mark owners forced to adopt new
enforcement strategies to protect their brands -- shift in distribution models and the
volume of counterfeit goods being trafficked online pose a threat to trademark owners'
brand integrity and goodwill -- threat to consumers' confidence in the online marketplace
-- International AntiCounterfeiting Coalition payment processor initiative -- Centre for
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Safe Internet Pharmacies (CSIP) -- Centre for Copyright Information (CCI) -- formulation
of best practice for online advertising.
Subject: Counterfeiting
Subject: Intellectual property enforcement
SNIPER No.: 2013/01786
Author: Eggington, Elaine
Added author: UK Intellectual Property Office
Added author: Association of University Research and Industry Links
Added author: Confederation of British Industry
Added author: PraxisUnico
Added author: Technology Strategy Board
Title: Collaborative research between business and universities: the Lambert toolkit 8
years on
Source: Collaborative Research Between Business and Universities. May 2013.
General Note: This is an independent report commissioned by the Intellectual Property
Office (IPO), in collaboration with AURIL, CBI, PraxisUnico and TSB.
Summary: Impacts arising from the development and introduction of the Lambert model
agreements and toolkit -- Lambert toolkit is a set of decision tools and standard
agreements designed to improve the process of negotiating collaboration agreements
between research establishments and business -- aim was to produce a compromise
approach that was fair and balanced, without favouring either industry or university
interests -- facilitate negotiations between potential collaborators -- reduce the time and
effort required to secure agreement -- provide examples of best practice -- report
examines whether the toolkit has achieved these aims -- based on evidence from a
wide spectrum of public and private organisations collected through an online survey,
supplemented by in-depth interviews.
Subject: Technology transfer--research--United Kingdom
Subject: Business collaboration--research--United Kingdom
SNIPER No.: 2013/01780
Author: Barbieri, Antonella
Title: Color trademark protection in the fashion industry
Source: World Intellectual Property Report. Vol. 27 No. 7, July 2013, pp. 42-43.
Summary: Legal battles of fashion houses across the world attempting to enforce their
trade mark rights on colours -- how courts in various jurisdictions have approached the
issue -- Italy -- France -- Office for the Harmonization of the Internal Market (OHIM)
Board of Appeals -- United States -- Louboutin's trade mark for red-soled shoes -- Gucci
v Guess -- brown-red-brown stripes on shoes -- Verve Clicquot orange colour -- Louis
Vuitton and Dooney & Bourke -- multicoloured handbags -- brand-owner's ability to
enforce its trade mark rights in colours or combinations of colours depends on ability to
provide evidence that disputed colour or combination of colours has acquired
distinctiveness through use
Subject: Colour marks--fashion and design industry
Subject: Colour marks--case law
Subject: Trade mark distinctiveness--fashion and design industry
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SNIPER No.: 2013/01280
Author: Kehoe, Emily
Title: Combating the counterfeiting woes of the wine seller in China
Source: IDEA: the Intellectual Property Law Review. Vol. 53 No. 2, 2013, pp. 257-289.
Summary: Wine is protected in China through trade mark law -- enforcement not a
viable strategy -- Chinese laws that regulate wine and wine counterfeiters -- how the
Chinese state plans to combat counterfeiting -- trade mark law -- administrative
Measure on Alcohol Circulation -- criminal law -- case law for wine counterfeiting victims
-- changes the United States government is advocating -- changing the civil laws is a
better approach than changing the criminal laws -- suggested changes
Subject: Counterfeiting--China
Subject: Alcohol marks--China
Subject: Trade mark enforcement--China
SNIPER No.: 2013/01868
Author: Ben-Meir, Doron
Title: Commercialisation Australia: supporting the translation of novel IP into
commercial reality
Source: Australian Intellectual Property Law Bulletin. Vol. 26 No. 2, August 2013, pp.
41-44.
Summary: Difficulty of achieving a successful commercialisation -- Australian
government launched Commercialisation Australia in 2010 -- assistance program
providing resource and funding to accelerate the business-building process for
Australian companies, entrepreneurs, researchers and inventors looking to
commercialise innovative intellectual property (IP) -- offers a range of funding options -program is assessed on merit-based criteria -- three core components, Grant Funding,
Case Management and the Expert Network -- success stories.
Subject: Intellectual property management--Australia
Subject: Business assistance--Australia
SNIPER No.: 2013/01779
Author: Germinario, Claudio
Title: A comparative look at Bowman v. Monsanto in the European context
Source: World Intellectual Property Report. Vol. 27 No. 7, July 2013, pp. 39-41.
Summary: US Supreme Court decision in Bowman v Monsanto -- infringement of
patent for glyphosate resistant or Roundup Ready (RR) soybean plant -- Bowman
claimed defence of patent exhaustion --defence of farmer's privilege not provided for in
US Patent Act -- Monsanto's licence agreements -- comparison of defence arguments in
US case with situation in Europe -- use of biological material planned and sold for
specific purpose regulated by European Directive 98/44/EC -- Article 10 of the Directive
exactly matches condition of licence agreement imposed by Monsanto to buyers of RR
soybean seeds -- defence of farmers' privilege would still fail in Europe even though the
patent system includes farmers' privilege exception to infringement -- arguments based
self-replicating nature of vegetable matter -- US judgment shows reasonable
harmonisation exists between US and EU systems regarding living matter and IP rights
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Subject: European Parliament. Directive 98/44/EC of the European Parliament and of
the Council of 6 July 1998 on the legal protection of biotechnological inventions
Subject: Patent infringement--biotechnology industry--United States
Subject: Patent infringement--biotechnology industry--Europe
Subject: Patent exhaustion--case law--United States
SNIPER No.: 2013/01719
Author: Chen, Jinchuan
Title: Considerations in drafting the explanation on IP infringement in e-commerce
Source: China Patents and Trademarks. Vol. 113 No. 2, April 2013, pp. 8-14.
Summary: Intellectual property in e-commerce -- China -- main characteristics of ecommerce infringement cases -- basic adjudication principles -- pre-examination
obligations for e-commerce businesses -- examination of porn, gambling and poisonous
information and the obligation to pre-review IP rights -- post-examination obligations -deletion-notification rules.
Subject: Electronic commerce--China
Subject: Intellectual property infringement--China
SNIPER No.: 2013/01305
Author: Vermaak, Nico
Title: Constitutional considerations in patent litigation
Source: World Intellectual Property Review. March-April 2013, p. 63.
Summary: South African Supreme Court of Appeal (SCA) -- adjudicating in appeal
proceedings in Cipla Medpro (Pty) Ltd v Aventis Pharma SA -- Treatment Action
Campaign (TAC) intervened -- Aventis sought an interim interdict to prevent Cipla from
infringing its patent -- Cipla in turn applied for the setting aside of an earlier amendment
of the patent -- both applications failed at first instance before the Court of the
Commissioner of Patents, and both parties appealed to the SCA -- Aventis' appeal
against the refusal of the commissioner to grant the interdict succeeded -- TAC's
argument -- SCA's decision.
Subject: Patent litigation--South Africa
Subject: Legal defences--South Africa
SNIPER No.: 2013/01446
Author: Putten, Simon Vander
Title: Copying an assortment of unprotected products
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 6, June 2013, pp.
446-447.
Summary: Competitor selling almost identical products to original business required to
change website and aspects of trade dress which may lead to consumer confusion -Cousins & Co v Melan, Court of Appeals -- The Belgian Market Practices and
Consumer Protection Act -- garlands of lights -- Melan garlands sold under trade name
"Happy Lights' -- Cousins did not have any intellectual property rights over their items -appeals court found that websites and trade dress similar and saw these practices as
parasitic competition -- practical significance.
Subject: Confusing similarity--case law--Belgium
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Subject: Brand confusion--case law--Belgium
Subject: Competition law
SNIPER No.: 2013/01787
Author: Favale, Marcella
Added author: UK Intellectual Property Office
Title: Copyright, and the regulation of orphan works: a comparative review of seven
jurisdictions and a rights clearance simulation
Source: Copyright and the Regulation of Orphan Works. July 2013.
General Note: This is an independent report commissioned by the Intellectual Property
Office (IPO).
Summary: Regulation of orphan works -- a study to view the treatment of orphan works
under copyright law in seven jurisdictions -- United States -- Hungary -- Denmark -European Union -- Canada -- India -- Japan -- a study licensing the use of the orphan
works: a rights clearance simulation -- Canada -- Japan -- Denmark -- Hungary -- United
States -- France -- purpose of the report to assist the UK Government in evaluating
policy options in the implementation of the Hargreaves Review of Intellectual Property &
Growth (2011) to enable and price the use of orphan works.
Subject: Copyright owners' rights
Subject: Intellectual property--reviews--United Kingdom
Subject: Copyright--culture and entertainment industry
SNIPER No.: 2013/01504
Author: Kolczyński, Janusz Piotr
Title: A copyright holder whose rights have been infringed may claim punitive damages
against the perpetrator beyond the actual damage incurred owing to the infringement:
commentary on Polish Supreme Court judgment of March 8, 2012 (V CSK 102/11)
Source: European Intellectual Property Review. Vol. 35 No. 3, 2013, pp. 172-175.
Summary: Act on Copyright and Related Rights (LCRR) -- art. 79(1) of the Polish
Copyright Act -- strictly compensatory nature of the demand -- Supreme Court judgment
-- Polish collecting society sued a Polish cable TV operator for infringement of the
managed copyrights -- punitive damages claimed -- there is no connection between the
culprits liability and the actual damage suffered by the right holder -- actual infringement
of the protected right triggers the liability in question -- author's view of the judgment -Polish Supreme Court seems to be disregarding the EU system of IP rights enforcement
-- disregard the premises establishing civil liability of the perpetrator.
Subject: Copyright infringement--case law--Poland
Subject: Damages--law and legislation--Poland
Subject: Intellectual property enforcement--Poland
SNIPER No.: 2013/01477
Author: McEniery, Benjamin J.
Title: Copyright in patent specifications and prior art documents: addressing legitimate
rights of user
Source: Intellectual Property Forum. No. 93, June 2013, pp. 49-57
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Summary: Amendments in 'Raising the Bar' legislation -- removal of impediments that
possibly limited the uses to which members of the public and IP Australia could have
put patent specifications without copyright owners' permission -- amendment of Section
226 of the Patent Act 1990 (Cth) -- projects affected by copyright in patent specifications
and prior art documents -- CAMBIA's Patent Lens -- Peer-to-Patent -- AUSPAT -copyright in patent specifications -- ownership of copyright -- Crown copyright -- implied
licence to use patent specifications -- copyright in non-patent prior art documents not
affected by these changes -- addressing legitimate rights of user to make use of the
information
Subject: Copyright owners' rights--Australia
Subject: Copyright--law and legislation--Australia
Subject: Patent specifications--Australia
SNIPER No.: 2013/01652
Author: Onslow, Robert
Title: Copyright infringement and software emulation: SAS Inc v World Programming
Ltd
Source: European Intellectual Property Review. Vol. 35 No. 6, 2013, pp. 352-355.
Abstract: Court of Justice of the European Union (CJEU) decision in SAS Inc v World
Programming Ltd -- infringement of copyright in computer related programs -cumulative effect of various decisions in the case -- legislation Article 4 of the Software
Directive -- emulation cases -- lack of causative link -- implementation vs reproduction -manuals as literary works -- Article 5(3) -- reference to the CJEU and judgment.
Subject: Copyright infringement--case law--Europe
Subject: Computer-related inventions--case law--Europe
Subject: Copyright owners' rights--information technology industry--Europe
SNIPER No.: 2013/01733
Author: White, Catherine
Title: The copyright king
Source: Intellectual Property Magazine. July-August 2013, pp. 12-14.
Summary: Interview with Richard Hooper, the United Kingdom's copyright frontman
and chair of the Copyright Hub's launch group -- copyright reviews around the world -United Kingdom's copyright reform -- development of a 'Copyright Hub'.
Subject: Hooper, Richard, 1939- --interviews
Subject: Copyright--reform--United Kingdom
SNIPER No.: 2013/01920
Author: Barraclough, Emma
Title: Copyright treaty for the blind signed
Source: Managing Intellectual Property. No. 231, July-August 2013, pp. 10-11.
Summary: Negotiators from World Intellectual Property Organisation's (WIPO) member
states -- deal to improve access for the blind, visually impaired, and print disabled to
published works in formats such as Braille, large print text and audio books -- allow
materials to be sent across borders and for technical protection measures designed to
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prevent copying to be broken -- work on the treaty has been controversial -- concerns of
copyright owners -- treaty signed by WIPO member states.
Subject: Copyright--treaties
Subject: Fair use (Copyright)
SNIPER No.: 2013/01345
Author: Fisher, Eli
Title: Corby copyright case clarifies implied licences and damages for flagrancy
Source: Australian Intellectual Property Law Bulletin. Vol. 25 No. 10, June 2013, pp.
217-219.
Summary: Decision of the Federal Court in Corby v Allen & Unwin Pty Ltd -- copyright
infringement of photographs -- common for those who acquire copyright material to
plead in their defence that they should not be liable in damages -- they were innocently
mistaken as to their rights to reproduce or communicate that material -- common in
respect of material available on the internet -- frequently assumed to be the subject of
licence from the copyright owner -- background to the case -- infringement of copyright - direct permission needed -- warning to publishers -- damages- high value images
equal high compensation -- tips.
Subject: Copyright infringement--case law--Australia
Subject: Copyright licensing--Australia
Subject: Damages--Australia
SNIPER No.: 2013/01755
Author: Noronha, Catherine
Title: Court between flaws
Source: Intellectual Property Magazine. July-August 2013, pp. 61-62.
Summary: Unitary Patent system -- applications -- translations -- single annual renewal
fee -- Unitary Patent may only be limited, transferred or revoked in respect of all
participating Member States -- a single prior national right could invalidate an entire
Unitary Patent across all member states -- Unified Patent Court (UPC) -- exclusive
jurisdiction for the enforcement of Unitary Patents -- formation of the UPC -- Local,
Regional and Central Divisions -- concerns about bifurcation -- concern that other
aspects of the UPC could lead to forum-shopping -- language of proceedings -- when
the system might come into force.
Subject: Patent systems--Europe
Subject: Patents--reform--Europe
SNIPER No.: 2013/01859
Author: Smith, Joel
Title: Court of Appeal says no to survey evidence again: Interflora Inc v Marks &
Spencer Plc
Source: European Intellectual Property Review. Vol. 35 No. 7, 2013, pp. 420-421.
Summary: Trade mark infringement case -- use of sponsored keywords for online
searches -- Interflora Inc v Marks & Spencer Plc -- second judgment from the Court of
Appeal in this case in relation to the admissibility of evidence from witnesses identified
through surveys -- background to the case -- analysis of the decision -- Court of Appeal
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clarified the position -- parties should give serious consideration to the evidential value
of surveys in trade mark infringement cases before embarking on such surveys -especially in cases involving consumer confusion for ordinary consumer goods or
services -- leading questions avoided -- further reminder of the importance of not "overlawyering" witness statements.
Subject: Trade mark infringement--case law--United Kingdom
Subject: Legal procedure--United Kingdom
SNIPER No.: 2013/01078
Author: Fütman, Özlem
Title: Courting change: a welcome decision on famous marks
Source: World Intellectual Property Review. January-February 2013, pp. 46-49.
Summary: German fashion brand 'S.Oliver' -- IP firm OFO Ventura contacted by
colleagues for a second opinion on a law suit dismissal in Turkey -- OFO appealed with
the result that the decision was reversed -- Suleyman Aydin Tekstil Company v S.Oliver
-- cancellation of Suleyman's 'S.Over' marks -- confusing similarity -- trade mark
infringement
Subject: Famous trade marks
Subject: Trade mark infringement--case law
Subject: Trade mark litigation--Turkey
Subject: Trade mark cancellation
SNIPER No.: 2013/01443
Author: Würtenberger, Gert
Title: The CPVO's Schnitzer Gala
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 6, June 2013, pp.
440-442.
Summary: Community Plant Variety Office (CPVO) discretion in technical examination
proceedings -- plant variety applications and examination -- Brookfield New Zealand Ltd
and Elaris SNC v Community Plant Variety Office and Schniga GmbH -- DUS
requirements -- earlier Case C-38/09 P Schäder v CPVO -- legal context -- analysis -facts -- practical significance.
Subject: Community Plant Variety Office
Subject: Plant breeder's rights--case law--Europe
Subject: Plant distinctiveness--case law--Europe
SNIPER No.: 2013/01939
Author: Matthews, Mark, 1959Added author: Intellectual Property Research Institute of Australia
Title: Creating and exploiting intangible networks: how Radiata was able to improve its
odds of success in the risky process of innovating
Source: IPRIA Occasional Paper, no. 01.13. August 2013.
Summary: Case study -- a wireless Local Area Network (LAN) developed by an
Australian company Radiata -- made possible by the development and use of another
type of 'intangible' network -- networks of highly-skilled people who know and trust each
other -- critical to achieving more favourable odds in the inherently risky process of
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innovating -- Radiata Communications Pty Ltd developed a single microprocessorbased wireless Local Area Network (LAN) device -- complied with a new international
standard for wireless LAN systems -- following interim investments by Cisco Systems
and Broadcom, Radiata was acquired by Cisco Systems for in November 2000 (with the
deal finalised in January 2001) -- Radiata is now widely cited as an example of
successful research commercialisation in Australia.
Subject: Research--Australia
Subject: Computing--Australia
Subject: Innovation (Technological)--case studies--Australia
SNIPER No.: 2013/01960
Author: Guarda, Paolo
Title: Creation of software within the academic context: knowledge transfer, intellectual
property rights and licences
Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 44
No. 5, August 2013, pp. 494-523.
Summary: Legal issues related to software management within universities -comparative overview of models used by the legal systems of Germany, Italy and the
USA -- ownership of intellectual property rights in copyrights and patents -- copyright in
software -- patentability of software -- software exploitation and licences -- role of
contract law especially licencing in the exploitation of software -- proprietary and open
source models for software licencing -- solutions and proposals for more efficient
management of IP rights -- systematic approach to knowledge transfer in a university
environment
Subject: Intellectual property management--education and training industry
Subject: Intellectual property licensing--education and training industry
Subject: Information management--education and training industry
Subject: Computer-related inventions--patentability
SNIPER No.: 2013/01797
Author: Mirandah, Gladys
Title: Criminal enforcement of trademark rights in Singapore and Malaysia
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 4, April 2013, pp. 28-32.
Summary: Overview of the criminal enforcement process in Singapore and Malaysia -issuance of a search warrant and conducting a raid -- issuance of a private summons
against the infringer -- conducting a raid -- criminal proceedings if settlement between
the parties fails -- practical concerns/pitfalls in applying for/executing a search warrant -statistics on the number of raids and total value seized by Singapore authorities -number of raids and type of goods seized by Malaysian authorities.
Subject: Trade mark infringement--Singapore
Subject: Trade mark infringement--Malaysia
Subject: Trade mark enforcement--Singapore
Subject: Trade mark enforcement--Malaysia
Subject: Counterfeiting--Singapore
Subject: Counterfeiting--Malaysia
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SNIPER No.: 2013/01429
Author: Gholz, Charles L.
Title: A critique of recent opinions in patent interferences
Source: Journal of the Patent and Trademark Office Society. Vol. 95 No. 1, 2013, pp.
24-46.
Summary: Precedential and non-precedential opinions relating to interferences
published in the United States Patent Quarterly (USPQ) in 2012 -- suppression or
concealment and peeler diligence -- 35USC(b) bars -- patentability issues arising in
interference context -- court review of decisions in interferences -- deference that the
district court owed to the Board of Patent Appeals and Interferences -- burden of proof -patent-patent interferences -- expired patents.
Subject: Patent ownership--case law--United States
Subject: Patentability--case law--United States
SNIPER No.: 2013/01410
Author: Muralidharan, R.
Title: Crunch time: compulsory licensing in India
Source: World Intellectual Property Review. Annual, 2013, pp. 108-110.
Summary: Landmark ruling in pharmaceutical case -- Bayer filed an appeal against the
granting of a compulsory license for Nexavar to Indian generic manufacturer Natco -Intellectual Property Appellate Board (IPAB) dismissed the appeal -- oncology palliative
drug -- patent-price linkage -- IPAB however revised the compulsory licence order to
increase the royalty payment to Bayer -- interpretation of the word 'working' under
Section 84(l)(c) -- price-control measures.
Subject: Compulsory licensing--India
Subject: Pharmaceutical industry--India
SNIPER No.: 2013/01391
Author: Narula, Ranjan
Title: Current challenges to IP and their possible solution
Source: World Intellectual Property Review. Annual, 2013, pp. 38-41.
Summary: Strong IP right regime encourages domestic innovation, international trade
and technology transfer -- improvements required in the Indian system at present -backlog of applications at the Indian Patent Office (IPO) -- infringement cases take
several years to conclude -- no special court of bench that hears IP infringement cases - 'debatable 'inventive step requirements in life sciences and pharmaceutical industries - balancing the public interest and IP owners' interests -- what is being done to confront
the challenges -- controversy over compulsory licensing a problem for India -- key
weaknesses in IP enforcement -- judicial system -- danger of India's IP protection
dragging behind -- cases to watch in the next few months.
Subject: Intellectual property systems--India
SNIPER No.: 2013/01480
Author: Friedgut, Martin
Title: Current developments: Australia
Source: Intellectual Property Forum. No. 93, June 2013, pp. 67-75
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Summary: Changes to eServices, AusPat and B2B -- Trade marks office manual
update -- Eli Lily and Company v Apotex Pty Ltd -- patent infringement on a
pharmaceutical compound used to treat schizophrenia -- Connect TV Pty Ltd v All
Rounder Investments Pty Ltd -- copyright -- Kartina subscription service for Russian
television broadcasts -- Cancer Voices Australia v Myriad Genetics Inc -- Research
Affiliates LLc v Commissioner of Patents -- Commissioner refusal of patent applications
Subject: Patent infringement--case law
Subject: Pharmaceuticals
Subject: Copyright--case law
Subject: Television broadcasts
Subject: Patenting of life forms
Subject: Genes--patentability
Subject: Patents--case law
SNIPER No.: 2013/01747
Author: Jarczyk, David R.
Title: Dealing in data
Source: Intellectual Property Magazine. July-August 2013, pp. 44-45.
Summary: Finding useful intellectual property (IP) information in the current public
domain is a complex and daunting task -- analysis containing insight into IP deals -focus deals in the pharmaceutical, software, consumer products, and
telecommunications industries -- goal of identifying key licensing trends specific to each
sector -- Using ktMINE, license agreements ranging from 2000-2012, were analysed -specific attention was paid to the royalty payment structures, type of IP licensed,
exclusivity, territory, and royalty rates.
Subject: Intellectual property licensing--information technology industry
Subject: Intellectual property licensing--statistics
SNIPER No.: 2013/01913
Author: Kretzschmar, Marcus D.
Title: A decisive 9:0 score in the final stage of the Myriad battle over gene patenting
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of
Patent Agents. Vol. 42 No. 6, June 2013, pp. 317-320.
Summary: United States Supreme Court 13 June 2013 decision -- whether isolated
gene sequences are eligible subject matter for patent protection -- Association for
Molecular Pathology v Myriad Genetics -- rare unanimous decision -- Court held that an
isolated DNA molecule is not patent-eligible subject-matter, if its nucleotide sequence is
identical to a naturally occurring gene sequence -- breaking with decades of US Patent
& Trademark Office (USPTO) practice -- are proteins encoded by genes or cDNAs
patent-eligible subject-matter -- implications of the decision -- impact on the
biotechnology industry -- what can patent owners do to mitigate negative consequences
of the Myriad decision -- effect on other segments of the biotechnology industry -decision provides enough guidance to assist applicants to take steps to mitigate or
avoid negative consequences of the decision.
Subject: Patenting of life forms--case law--United States
Subject: Genes--patentability--United States
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SNIPER No.: 2013/01389
Author: Prosser, Susan
Title: Defending your brand turf online
Source: World Intellectual Property Review. Annual, 2013, pp. 32-33.
Summary: Online brand monitoring tools -- online brand protection has to extend
beyond the borders of one's local jurisdiction -- cybersquatting, 'spear fishing' from
typosquatted domains -- fastest growing threats are in the country code top level
domain (ccTLD) -- knowing when a 'bad' domain exists in the DNS -- mitigating abuse -Internet Corporation for Assigned Names and Numbers (ICANN) -- Trademark
Clearinghouse (TMCH).
Subject: Brand management
Subject: Domain name registration
SNIPER No.: 2013/01430
Author: Litman, Mark A.
Title: Deficiencies in the decision and USPTO application of Mayo Collaborative
Services, dba Mayo Medical Laboratories, et al. v. Prometheus Laboratories, Inc.
Source: Journal of the Patent and Trademark Office Society. Vol. 95 No. 1, 2013, pp.
49-59.
Summary: Decisions in Mayo and Prometheus fails in both evaluating the underlying
technology and factual background of the technology reviewed in the decision -- or in
providing meaningful standards or guidelines to differentiate patentable subject matter
as a law of nature -- according to the requires of 35 USC 101 -- patent process claims -concept of "law of nature" -- fatal definitional error -- the application of that interpretation
distorts any possible standardised application of the "law of nature" prohibition towards
U.S. patent claims.
Subject: Patentability--case law--United States
Subject: Patentability--science and research industry--United States
SNIPER No.: 2013/00232
Author: Wu, Bing
Title: Determination of "combination" in assessment of design patentability
Source: China Patents and Trademarks. Vol. 111 No. 4 October 2012, pp. 39-41.
Summary: Chinese Patent Law Amended to incorporate the ways to determine
"combination" -- determination of inspiration to combination -- selection of the closest
prior design -- composition of product -- determination on the basis of knowledge and
cognitive capacity of average consumers by following the doctrine of global observation
and comprehensive judgment.
Subject: Industrial designs--China
SNIPER No.: 2013/01721
Author: Yang, Cunji
Title: Determination of disclosure and technical motivation in the sense of patent law:
thoughts from the Supreme People's Court Case No. Zhixingzi 3/2012
Source: China Patents and Trademarks. Vol. 113 No. 2, April 2013, pp. 37-41.
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Summary: Disclosure of technical features -- utility model specification -- China -Supreme People's Court Case No. Zhixingzi 3/2012 -- facts of the case -- outcome of
the court review -- analysis of the decision.
Subject: Minor patents--case law--China
Subject: Patent specifications--case law--China
Subject: Patent disclosure--case law--China
SNIPER No.: 2013/00237
Author: Rui, Songyan
Title: Determination of distinctive character and aesthetic function of three-dimensional
marks
Source: China Patents and Trademarks. Vol. 111 No. 4, October 2012, pp. 83-87.
Summary: Three dimensional signs -- determination of distinctive character of mark in
suit -- a square bottle indicating a colour -- Weishida Corporation -- determination of
aesthetic function of the mark in suit -- decided mark in suit was not aesthetically
functional, not contrary to Article 12 of the Trademark Law.
Subject: Shape marks--case law--China
Subject: Shape marks--registrability--China
SNIPER No.: 2013/01772
Author: Smyth, Stuart J.
Title: Developing a patent landscape methodology
Source: Queen Mary Journal of Intellectual Property. Vol. 3 No. 3, September 2013, pp.
241-250.
Summary: Freedom to operate (FTO) -- obtaining licences to intellectual property to
initiate research projects -- commercialisation of inventions -- intellectual property
strategies -- pilot project of a patent landscape methodology -- Canadian research
project utilising patent databases searched in Canada, United States, Australia, Japan,
the European Union and World Intellectual Property Office (WIPO) -- project developed
for an oilseed project -- been successfully applied to a biofuels project, where no
overlap of technologies exists -- suggests methodology is replicable -- capable of
producing consistent results regardless of the technology field that it is applied to.
Subject: Patents--analysis
Subject: Patents--management
Subject: Value of intellectual property
SNIPER No.: 2013/01666
Author: Keane, Patrick C.
Title: Developing global IP strategies in the wake of the America Invents Act
Source: Intellectual Asset Management. No. 60, July/August 2013, pp. 99-107.
Summary: Introduction of first-to-file patent rights -- America Invents Act (AIA) -- United
States -- intellectual property portfolio management -- scope of prior art -- management
strategies to preserve pre-AIA treatment by US Patent and Trademark Office -- grace
periods -- use of derivation proceedings to remove prior art or co-pending applications -impact of AIA on litigation strategies -- reissue and re-examination -- post-grant review.
Subject: United States. Leahy-Smith America Invents Act
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Subject: United States. Patent and Trademark Office--procedure
Subject: Patent filing--United States
Subject: Patent applications--United States
Subject: Intellectual property management--United States
SNIPER No.: 2013/01083
Author: Holme, Marianne
Title: Differences between US and European patent applications
Source: World Intellectual Property Review. January-February 2013, p. 56.
Summary: Differences in the ways United States (US) patent and European patent
(EP) applications are drafted -- pose problems during substantive examination when an
EP application is filed based on a US application -- EP applications -- single
independent claims -- multiple dependent claims -- US applications -- multiplicity of
independent claims -- dependent claims refer to just one main claim -- multiple
dependent claims are possible -- subject to extra fees and are rarely used -- entry of the
US application into the regional stage at the European Patent Office (EPO) -- difference
in the way the descriptions are drafted in US and EP applications -- EPO requirements
seem to conflict with US requirements -- solutions.
Subject: Patent applications
Subject: Patent claims
SNIPER No.: 2012/01797
Author: Munoz-Tellez, Viviana
Title: Dispute settlement under the TRIPS Agreement: the United States-Brazil (2000)
and United States-Argentina (2002) patent disputes
Source: Correa, Carlos M. (ed.),Research handbook on the interpretation and
enforcement of intellectual property under WTO rules. Cheltenham, U.K.: Edward Elgar,
2010. pp. 215-236.
Summary: World Trade Organization (WTO) dispute settlement system and the TRIPS
agreement -- to provide security and predictability to the multilateral trading system -works to clarify and interpret the provisions of WTO agreements -- WTO dispute
settlement system applies to the Agreement on Trade related Aspects of Intellectual
Property Rights (TRIPS) -- United States - Argentina patent dispute -- United States Brazil patent dispute.
Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994
April 15)
Subject: Dispute resolution
Subject: Patent litigation--United States
Subject: Patent litigation--Argentina
Subject: Patent litigation--Brazil
SNIPER No.: 2013/01916
Author: Iqbal, Zarina
Title: Divergent approaches towards patentability of inventions relating to diagnostics,
biomarkers and personalized medicines in various technology-driven economies
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Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of
Patent Agents. Vol. 42 No. 6, June 2013, pp. 327-331.
Summary: Patent eligibility of diagnostics, biomarkers, personalised medicines and
related inventions around the world -- US approach towards patentability of diagnostic
methods/techniques -- beyond Bilski and Mayo, CLS v Alice suggests "inertia' as the
best strategy to adopt in the US -- UK and EPO approach towards assessment of
diagnostic-type method claims -- Australian High Court advocates a relatively liberal
approach on patentability of medical treatment related inventions -- position in Pakistan
consistent with the practice in the US, UK and EP but divergent from Australia -implications of Prometheus and Myriad decisions on patent eligibility of diagnosticsrelated technologies.
Subject: Patentability--case law--United States
Subject: Medical procedures--patentability
SNIPER No.: 2013/01294
Author: Rasmussen, Jens
Title: Divisionals as prior art
Source: World Intellectual Property Review. March-April 2013, p. 51.
Summary: European Patent Convention (EPC) -- divisional applications -- decision
T1496/11 concerns a Euro-PCT application (EP1), claiming priority from a national
application (N), which described only some embodiments of a generic feature -- EP1 did
not claim the mentioned embodiments, but instead claimed the generic feature and for
this reason could not validly claim priority from N -- applicant chose to divide EP1 to a
divisional application EP2, which claimed the embodiments disclosed in N, and could
therefore validly claim priority from N -- EP2, as an EP application, therefore had a filing
date prior to and a publication date on or after the filing date of EP1, and for this reason
became state of the art relative to EP1 according to Article 54( 3) EPC.
Subject: Patent priority--case law--Europe
Subject: Patent applications--Europe
SNIPER No.: 2013/01966
Author: Nicol, Dianne
Title: Do patents impede the provision of genetic tests in Australia?
Source: Australian Health Review. Vol. 37 No. 3, 2013, pp. 281-285.
Summary: Impacts of patents on innovation and access to healthcare -- reports the
results of a survey of managers of Australian genetic testing laboratories that asked a
series of questions relating to the tests they perform, whether they pay to access
patented inventions and whether they have received notifications from patent holders
about patents associated with particular tests -- survey was conducted after publicity
surrounding the announcement of a strategic alliance between Myriad and Genetic
Technologies Ltd (GTG) -- provided GTG with an exclusive licence to the relevant
BRCA patents in Australia and New Zealand -- results provide an evidence base for
development of health policy and law reform -- suggests that patent enforcement
actions may increase in the future but little evidence that providers of genetic testing
services are being exposed to aggressive patent enforcement practices.
Subject: Patent systems--Australia
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Subject: Patent enforcement--biotechnology industry--Australia
Subject: Genes
Subject: Biotechnology industry--Australia
SNIPER No.: 2013/01869
Author: Kretzschmar, Olaf
Title: Doing business in Europe?: how to build a strong trade mark and avoid the pitfalls
arising from the European jurisdiction
Source: Australian Intellectual Property Law Bulletin. Vol. 26 No. 2, August 2013, pp.
45-48.
Summary: For Australian companies or businesses wishing to commence trading in the
European Union (EU) trade mark registration is an essential task to accomplish -- every
jurisdiction has its own aspects that influence the process of trade mark registration -European trade mark law -- current proposals to reform EU trade mark law.
Subject: Trade mark registration--Europe
Subject: Trade marks--law and legislation--Europe
Subject: Trade marks--reform--Europe
SNIPER No.: 2013/01289
Author: Fuller, Stuart
Title: Domain names: another industry that's crying wolf?
Source: World Intellectual Property Review. March-April 2013, pp. 42-43.
Summary: New generic top-level domains (gTLDs) -- legal debate and operational
issues still to be resolved -- many small and medium enterprises unaware of the new
gTLD programme -- many more have no plans to adopt any of the new gTLDs when
they are launched -- biggest opportunity, and threat, for brand owners since the first
domain name was registered -- dangers of ignorance -- brands who dominate online
space will continue to do so without any opposition -- cybercrime will still be a menace
to all brands -- advantage of using the Trademark Clearinghouse (TMCH) to secure
rightful domain names for brand holders could be lost -- valuable domain names will go
unregistered in the trade mark sunrise phases of the gTLD launches -- opening of the
TMCH is a good opportunity to get a new domain name strategy formulated.
Subject: Domain name registration
Subject: Intellectual property awareness
SNIPER No.: 2013/01872
Title: Driving brands mad?: copying in the Chinese auto industry
Source: World Intellectual Property Review. May-June 2013, pp. 24-27.
Summary: China's ability to innovate -- recently seen as less of a creator and more of a
copier -- China's car market is booming -- protecting intellectual property (IP) is
imperative for car makers eyeing up this lucrative market -- IP infringement is rife -legislation and enforcement have improved -- amendments to the Trade Mark Law -widen the scope of trade mark infringement -- increase the maximum statutory damages
-- switch the burden of proof from the victim to the infringers -- victories for non-Chinese
auto manufacturers in the courts -- still problems with litigating in China -- difficult to
recover reasonable damages -- utility and design patents require a lower level of
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innovation than an invention patent -- explains why Chinese companies invest less in
the auto industry than their foreign counterparts -- long way to go in the fight against
fake cars -- how IP owners should protect their IP.
Subject: Intellectual property rights--manufacturing and processing industry--China
Subject: Intellectual property litigation--China
SNIPER No.: 2013/01729
Author: Aziz, Khurram
Title: Drugs bust
Source: Intellectual Property Magazine. July-August 2013, pp. 6-7.
Summary: Pay-for-delay deals between brand name pharmaceutical companies and
generic drug firms -- regulators have accused big pharma of using the deals to delay the
availability of cheap copies of their blockbuster drugs -- Federal Trade Commission
(FTC) and European Commission have used antitrust laws to take pharmaceutical firms
to court over the deals -- US Supreme Court released a decision that has offered little
guidance as to whether pay-for-delay deals are legal -- Congress plans to introduce
legislation which would ban the deals.
Subject: Competition law
Subject: Pharmaceutical industry--case law--United States
SNIPER No.: 2013/01441
Author: Barazza, Stefano
Title: Dutch court examines the EU-wide effects of a Community Design Court decision
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 6, June 2013, pp.
435-437.
Summary: Dutch court refused to rule against earlier decision by English court acting
as a Community Design Court of second instance -- Samsung v Apple -- alleged
infringement of Apple's registered Community design (RCD) by Samsung -- Galaxy Tab
-- in Netherlands and United Kingdom Samsung ruled to have not infringed -- in
Germany injunction granted and the sale of the Galaxy Tab 7.7 prohibited -- Council
Regulation 6/2002 and the avoidance of forum shopping -- Dutch court rejected Apple's
counterclaims and allowed non-infringement request by Samsung -- problem of
formally different companies established in different Member States bringing various
actions on the same legal matter -- harmonisation of design rights in EU still does not
prevent conflicting judgments.
Subject: Industrial design litigation--case law--Netherlands
Subject: Industrial design infringement--Europe
Subject: Industrial design litigation--harmonisation--Europe
SNIPER No.: 2013/01774
Author: The Centre for International Economics
Title: Economic analysis of the impact of isolated human gene patents
Source: Economic Analysis of the Impact of Isolated Human Gene Patents. May 2013.
General Note: Prepared for IP Australia.
Summary: Isolated human gene patent -- economic activity associated with isolated
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economics of the business of bringing an idea to market -- valuing the benefits and
costs of isolated human gene patents -- incentives and disincentives to undertake and
commercialise research -- analyse evidence on the economic costs and benefits to
Australia of the patenting of isolated human genes.
Subject: Genes--patentability--Australia
Subject: Patentability of life forms--research--Australia
SNIPER No.: 2013/01388
Author: Şimşek, Oktay
Title: An effective tool against counterfeit and pirated goods: customs measures in
Turkey
Source: World Intellectual Property Review. Annual, 2013, pp. 28-30.
Summary: Turkey as a hub between Europe and Asia -- customs applications a useful
weapon used by authorities in the fight to protect IP -- customs applications and
enforcement -- filing procedures for customs -- customs detention procedures -notification of suspended goods by the customs authorities -- court action and
preliminary injunction -- ex officio actions by the customs authorities.
Subject: Customs--Turkey
Subject: Counterfeiting--Europe
Subject: Counterfeiting--Asia
SNIPER No.: 2013/01596
Author: Moir, Hazel V. J.
Title: Empirical evidence on the inventive step
Source: European Intellectual Property Review. Vol. 35 No. 5, 2013, pp. 246-252.
Summary: Inventive step bears the largest part of the weight in balancing the benefits
of patent systems against their costs -- data used in the study are a set of business
method patents originally accepted for grant in Australia with parallel applications at the
USPTO and EPO -- cases were assessed for their inventiveness using an economic
yardstick -- existing knowledge readily identifiable for most applications -- combinations
of known elements provide particular challenges for patent systems -- old doctrines
have not been used effectively to prevent grant of patents to any of the trivial inventions
in the dataset -- analogous use doctrine -- redrafting to overcome a novelty objection -use of semantics rather than substance to achieve patent grant -- patent law definition
of inventiveness differs from the ordinary meaning of the term -- new knowledge is
required for patent grant.
Subject: Inventive step--analysis
Subject: Patent granting--trends
Subject: Business methods--patentability--Australia
SNIPER No.: 2013/01799
Author: Olsen, Sam
Title: The enemy within
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 4, April 2013, pp. 36-38.
Summary: Threats to a company's assets and intellectual property from the corporate
insider -- 2012/13 Kroll Advisory Solutions Fraud Report -- Asian economies -- short-cut
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the R&D process -- strategies to stop internal IP theft -- two critical areas: a company's
operations and IT environment -- top ten ways to steal IP.
Subject: Piracy--Asia
Subject: Trade secrets--Asia
SNIPER No.: 2013/01795
Author: Chan, Johnny
Title: The enforcement conundrum
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 4 April 2013, pp. 20-24.
Summary: Trade mark law sufficient in Asia -- enforcement actions remain a problem -roundtable discussion with experts sharing their enforcement views and stories -- India - China -- Malaysia -- Taiwan -- Saif Khan -- Fu Haiying -- Tsai Ruey-Sen -- M
Ravindran -- Karen Abraham -- Zhu Zhigang -- distribution of counterfeits -- authorities
focussing their efforts on distribution or manufacturing channels -- identifying fakes -importing counterfeits.
Subject: Trade mark attorneys--interviews--Asia
Subject: Counterfeiting--Asia
SNIPER No.: 2013/01598
Author: Torti, Valerio
Title: Enforcement of a maximum licensing cap in standardization environments
Source: European Intellectual Property Review. Vol. 35 No. 5, 2013, pp. 261-272.
Summary: Standard setting organisations (SSOs) -- exploitation of relevant rights in
standard setting environments -- patent hold-up -- tension between standards and
intellectual property rights (IPRs) -- fair, reasonable and non-discriminatory (FRAND)
regime implemented by SSOs -- effectiveness of a maximum licensing cap regime -how a maximum licensing cap, coupled with a robust disclosure system, may be
enforced under public and private law remedies -- enforcement of further private law
remedies -- enforcement of competition as ex post effective remedy.
Subject: Standards (Technical)
Subject: Patent licensing--United States
Subject: Competition law
SNIPER No.: 2013/01912
Author: Xu, Jian
Title: Enforcing intellectual property in China
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of
Patent Agents. Vol. 42 No. 6, June 2013, pp. 312-314.
Summary: Domestic and international intellectual property owners have success in
enforcing intellectual property in China -- advantages: inexpensive; relatively quick;
addresses the infringement at its source -- issues of infringement and validity are
bifurcated for invention patents -- can obtain a judgment for infringement while parallel
revocation proceedings are pending -- preliminary steps -- letter before action and
interim injunctions -- initial investigation -- speculative infringer -- notarised sample
purchase -- administrative actions -- customs -- civil litigation -- criminal proceedings.
Subject: Intellectual property enforcement--China
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Subject: Intellectual property rights--China
SNIPER No.: 2013/01624
Author: Lamande, Vincent
Added author: European Patent Office
Title: Enhancing technology transfer at universities through collaboration with patent
offices: best practices and emerging needs: what national patent offices can do to help
academic institutions
Source: Enhancing Technology Transfer at Universities Through Collaboration With
Patent Offices. 2012.
Summary: Enhancing IP strategy: the main challenges -- IP awareness and
educational tool -- IP management and technology transfer services -- relationship
between the national patent offices and tech transfer offices in the EPO member states
-- targeted services for universities -- recommendations for enhancing the use of IP by
universities.
Subject: Technology transfer--Europe
Subject: Value of intellectual property--education and training industry--Europe
SNIPER No.: 2013/01858
Author: Alexis, Alexei
Title: European Commission proposes stricter EU antitrust rules on technology transfer
Source: European Intellectual Property Review. Vol. 35 No. 7, 2013, pp. 415-419.
Summary: European Commission tabled a draft Technology Transfer Block Exemption
Regulation and Guidelines to replace safe harbour rules in force for technology transfer
arrangements - good housekeeping" measures to clarify which licensing deals can
benefit from the new regime -- scope of the guidance expanded to embrace complex
issues such as technology pools and settlement agreements -- consultation process
anticipated by IP rights stakeholders -- scope of the application of the draft TTBER -market share thresholds and calculations -- "hard-core" and excluded restrictions -settlement agreements -- technology pools.
Subject: Technology transfer--Europe
Subject: Competition law--Europe
SNIPER No.: 2013/01818
Author: Casalonga, Caroline
Title: European Union
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
42-47.
Summary: How to treat counterfeit goods in external transit -- partially resolved by the
European Court of Justice (ECJ) decision in the joined cases Philips and Nokia -customs authorities may detain counterfeit goods in external transit -- such goods are
not infringing if it was intended that they be put on sale outside the EU market -- goods
may infringe and be classified as counterfeit if it can be demonstrated that they were
intended for sale in the European Union -- demonstrating intent -- legal framework for
anti-counterfeiting -- EU applications for action by customs authorities -- measures and
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actions by national customs authorities -- customs detention procedure pursuant to an
EU application -- actions by rights holder -- preliminary measures -- remedies.
Subject: Counterfeiting--Europe
Subject: Customs--Europe
SNIPER No.: 2013/01662
Author: Holden, Peter D.
Title: The ever-changing IP monetisation marketplace for PAEs
Source: Intellectual Asset Management. No. 60, July/August 2013, pp. 37-46.
Summary: Intellectual property monetisation by non-practising entities (NPEs) -- patent
valuation -- breakdown of public/private NPEs -- reverse mergers and the rise of public
IP companies -- increased capital flows into IP ecosystem -- analysis of IP monetisation
failures -- common reasons why monetisation programs fail -- higher litigation bar for
NPEs -- patent assertion entity (PAE) community adapting dynamically to changes in
environment -- more creative monetisation partnerships -- investor's perspective on
realised values and financial returns.
Subject: Value of intellectual property
Subject: Patent trolls--trends
Subject: Patent litigation
SNIPER No.: 2013/01665
Author: Ellis, Jack
Title: Everyone's a winner
Source: Intellectual Asset Management. No. 60, July/August 2013, pp. 73-79.
Summary: Mediation in intellectual property disputes -- significant number of rights
owners prefer to litigate -- need to create environments where IP owners can suggest
mediation -- risk that emotional investment can cause mediation attempts to break down
-- choosing a mediator -- popularity of hybrid mediation strategies -- mediation and IP
value.
Subject: Dispute resolution
Subject: Patent litigation
SNIPER No.: 2013/01406
Author: Tekil, Esra
Title: Evicting the squatters: strategies in Turkey
Source: World Intellectual Property Review. Annual, 2013, pp. 94-97.
Summary: Trade mark squatting -- bath faith registrations received by the Turkish
Courts of Intellectual Property Rights -- evidence of first use of the trade mark -- trade
mark squatters create a commercial pressure on the real owner to accept their price,
aware that the legal process does not work fast -- squatters focus on rising US and
European brands, which are not actively known or used in Turkey -- possible legal
remedies under Turkish Trademark Law -- success through opposition is weak -principle of good faith -- precautionary injunction.
Subject: Trade mark ownership--Turkey
Subject: Trade mark registration--Turkey
Subject: Legal procedure--Turkey
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SNIPER No.: 2013/01746
Author: Verwholt, Cara
Title: Exercising caution
Source: Intellectual Property Magazine. July-August 2013, pp. 41-43.
Summary: United States companies and universities taking a closer look at intellectual
property (IP) costs -- The 2013 US Global Patent & IP Trends Indicator -- how the
economy has impacted global IP strategy and its influence on future foreign filing plans - impact of the America Invents Act -- foreign patent filing is on an upswing -overwhelming majority of respondents used the Patent Cooperation Treaty (PCT) for
their foreign filing -- applicants are taking more control of foreign patent filing in order to
cut costs -- China becomes regular filing destination v emerging market -- experiences
with international searching authorities -- outlook for 2013.
Subject: Patent filing--statistics
Subject: Intellectual property--costs--United States
SNIPER No.: 2013/01448
Author: Clark, Robert, 1952Title: Exhaustion, geographical licensing restrictions and transfer prohibitions: two
surprising decisions
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 6, June 2013, pp.
460-469.
Summary: Court of Justice of the European Union (CJEU) copyright exhaustion
decisions involving digital products -- the principle of community exhaustion/first sale -the Community exhaustion principle and the difference between goods and services -domestic law and the exhaustion principle -- the Football Association Premier League
decision -- contracts for electronic versions of physical goods -- the UsedSoft decision -the exhaustion question and the Software Directive -- the lawful acquirer within Article
5(1) of the Software Directive -- impact of UsedSoft -- UsedSoft and the United States
position -- the debate about the first sale doctrine in the US and the EU is very different
-- a win for users over rightsholders -- significance of decisions.
Subject: Copyright--case law--Europe
Subject: Copyright exhaustion--case law--Europe
Subject: Copyright exhaustion
SNIPER No.: 2013/01669
Author: Dinaut, Nicole
Title: Experimental use or infringement?: location matters
Source: Intellectual Asset Management. No. 60, July/August 2013, pp. 113-115.
General Note: IAM Supplement: IP in the Life Science Industries 2013.
Summary: Experimental use exceptions -- patent infringement -- differences between
jurisdictions -- United States -- Whittemore v. Cutter -- Roche Products v. Bolar
Pharmaceutical -- Embrex Inc. v. Service Engineering Corp. -- Madey v. Duke
University -- Eli Lilly & Co. v. Medtronic Inc. -- Merck KGaA v. Integra Lifesciences I,
Ltd. -- Classen Immunotherapies Inc. v. Biogen Idec -- Momenta Pharmaceuticals Inc.
v. Amphastar Pharmaceuticals Inc. -- Canada -- Micro Chemicals Ltd. v. Smith Kline -- 50 -
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Astra Pharmaceuticals Canada Ltd. v. Apotex Inc. -- Cochlear Corp. v. Cosem
Neurostim Ltée -- Eurocopter v. Bell Helicopter Textron Canada Limitée -- Merck & Co.
Inc. v. Apotex Inc. -- United Kingdom -- Monsanto Co. v. Stauffer Chemical Co. -- Core
Valve Inc. v. Edwards Lifesciences AG.
Subject: Experimental use (Patents)
Subject: Patent infringement
Subject: Legal defences
SNIPER No.: 2013/01432
Author: Bentele, Keith
Title: Exploring the patent surge: increased incentives or multiplying motives?
Source: Journal of the Patent and Trademark Office Society. Vol. 95 No. 1, 2013, pp.
99-122.
Summary: Patent surge experienced in North America -- Norwegian patent system -country's small but consistently strong market attracting inventors from all over the world
-- patent surge understood as a product of two sets of developments -- proliferation of
non-traditional commercial uses of the patent system experienced globally -developments unique to the U.S. judiciary driving disproportionate growth in American
applications -- patent protection in the United States -- strengthening of rights.
Subject: Patent systems--United States
Subject: Patent systems--United States
SNIPER No.: 2013/01873
Title: False profits: how True Religion fights the fakers
Source: World Intellectual Property Review. May-June 2013, pp. 28-31.
Summary: Jeans company True Religion has a counterfeiting problem -- number of
fake goods increasing -- changing profile of counterfeiting -- China is the hub for
counterfeiting activity -- monitoring the internet -- civil action -- using injunctions to seize
websites -- stepping stone for targeting the counterfeiters' revenue stream -International Anti-Counterfeiting Coalition (IACC) -- Payment Processor Portal (PPP)
provides a streamlined approach to tracing the counterfeiter's money supply -- True
Religion pursues criminal enforcement avenues first -- administrative raids in China.
Subject: Intellectual property enforcement
Subject: Counterfeiting
SNIPER No.: 2013/01519
Author: Cashman, Tom
Title: Federal Court revisits implied licences and clarifies Concrete v Parramatta
Designs
Source: Australian Intellectual Property Law Bulletin. Vol. 26 No. 1, July 2013, pp. 6-8.
Summary: Copyright cases concerning building plans -- implied licence created by the
creation of plans for a project when circumstances change and the copyright owner is
no longer involved in the construction -- challenge notions of the scope of implied
copyright licence -- last major decision in this area -- decision of the High Court in
Concrete Pty Ltd v Parramatta Design & Developments Pty Ltd -- has been applied by
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the Federal Court in Tamawood Ltd v Habitare Developments Pty Ltd -- distilling from it
clearer guidance on the important principles in this area.
Subject: Copyright licensing--case law--Australia
Subject: Copyright--building and construction industry--Australia
SNIPER No.: 2013/01308
Author: Sutton, Paul J., 1939Title: Federal patent malpractice cases bounced
Source: World Intellectual Property Review. March-April 2013, p. 66.
Summary: United States Supreme Court -- holding in the decision of Gunn v Minton
that federal courts do not have exclusive subject matter jurisdiction over claims
asserting patent malpractice -- effects of this decision -- will throw into turmoil pending
malpractice litigations that were brought in federal courts in good faith, based on longestablished judicial precedent -- a hypothetical situation simulating real world situations
existing today -- matters arising from the scenario.
Subject: Patent litigation--United States
Subject: Patent attorneys
SNIPER No.: 2013/01929
Author: Pattison, James
Title: Feeding the patent trolls [podcast]
Source: Law Report. 30 July 2013(mp3 audio file).
Summary: Patent trolls -- patent infringement -- use of patents for litigation only -- cost
to business from patent trolls -- sale of intellectual property from failed businesses -patent licensing -- what behaviours constitute patent trolling -- United States Shield Law
to criminalise certain trolling activities -- Vringo Infrastructure Inc. v. ZTE (Australia) Pty.
Ltd.
Subject: Summerfield, Mark--interviews
Subject: Heitman, Kim--interviews
Subject: Patent trolls--Australia
Subject: Patent litigation--communication services industry--Australia
Subject: Patent litigation--information technology industry--Australia
SNIPER No.: 2013/01921
Author: Winters, Vernon M.
Title: Fee-shifting: a life raft in a perfect litigation storm
Source: Managing Intellectual Property. No. 231, July-August 2013, pp. 22-24.
Summary: Litigation by patent trolls accounts for most patent litigation filed in United
States courts -- patent fee-shifting statute, 35 USC s. 285 and Rule 11 of the Federal
Rules of Civil Procedure should operate to stop frivolous patent litigation -- too many
escape routes for plaintiffs -- difficult to obtain sanctions in practice -- Chief Judge
Rader urged judges to look more closely for signs that a patent lawsuit was pursued
using the threat of litigation cost, rather than the merits of a claim, to extract a
settlement -- evidence that district judges are not comfortable imposing fee-shifting
orders.
Subject: Patent trolls
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Subject: Patent litigation
SNIPER No.: 2013/00156
Author: MacMillan, Fiona, LLB
Title: Finding space in the margins?: recognising the rights of indigenous peoples in the
WTO
Source: Graber, Christoph B., et al. (eds.), International trade in indigenous cultural
heritage: legal and policy issues. Cheltenham, U.K.: Edward Elgar, 2012. pp. 88-117.
Summary: International legal regime is divided -- public international law -- international
economic law -- protection of traditional knowledge and traditional cultural expressions
are recognised in the public international law system -- difficulty in finding space for the
recognition of these interests in international economic law -- problematic in light of the
systemic pre-eminence of WTO (World Trade Organization) law -- relationship between
the two systems -- places of indigenous peoples, cultural heritage protection and
intellectual property protection within the two systems -- analysis of the WTO Appellate
Body decision in China Measures Affecting Trading Rights and Distribution Services for
Certain Publications and Audio-Visual Entertainment Products -- whether or not it is
possible to find a space in the WTO system for the recognition of values generated in
the public international system with respect to the protection of the cultural heritage of
indigenous peoples.
Subject: Traditional cultural expressions
Subject: International law
Subject: Economics
SNIPER No.: 2013/01395
Author: Vasilescu, Raluca
Title: The fine line between drugs and supplements
Source: World Intellectual Property Review. Annual, 2013, pp. 50-53.
Summary: Risk of confusion between healthcare and vitamin supplement trade marks - specific features of the confusion in the field of healthcare products -- public and their
awareness -- pharmaceutical trade marks and food supplements -- assessment of the
risk of confusion -- food supplements are in the same trade mark class as
pharmaceutical preparations -- osteo aktiv -- osteo vitactiv -- Eurovita -- subjective
interpretation.
Subject: Confusing similarity--pharmaceutical industry
Subject: Confusing similarity--health and community services industry
SNIPER No.: 2013/01732
Author: Aziz, Khurram
Title: Flatter to deceive
Source: Intellectual Property Magazine. July-August 2013, p. 11.
Summary: Own brand alternatives to popular brands -- arguments by producers of
lookalikes -- brand owners argue that lookalikes trade parasitically off the reputation of
their products, duping consumers and taking unfair advantage of the investments they
have made in product innovation, consistency and quality -- destroy a brand's
distinctiveness and its ability to stand out on the supermarket shelf -- UK Intellectual
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Property Office (UKIPO) has produced an exhaustive study into this area -- to assess
the impact of lookalikes on consumers -- findings -- whether there is anything in existing
trade mark law which can help brand owners fight parasitic copying.
Subject: Trade dress--United Kingdom
Subject: Confusing similarity--statistics--United Kingdom
SNIPER No.: 2013/01288
Author: Perez, Eugene T.
Title: Flo Healthcare v Kappos: time for the Federal Circuit to show its hand
Source: World Intellectual Property Review. March-April 2013, pp. 38-40.
Summary: Construing claims for purposes of assessing patentability -- US Patent and
Trademark Office (USPTO) patent examiner or the Patent Trial and Appeal Board
(PTAB) apply the "broadest reasonable interpretation" (BRI) standard -- America
Invents Act (AIA) proceedings of inter partes review (IPR) will also involve this claim
construction standard -- district court will assess validity and use a higher claim
construction standard -- construe claims more narrowly to preserve validity due to the
clear and convincing standard -- on appeal, Court of Appeals for the Federal Circuit
(CAFC) will review any claim construction by a district court de novo -- how does the
CAFC review the previous claim construction by the PTAB or examiner? -- string of
CAFC cases has led to inconsistent application of the standard of review -- CAFC
should clarify the standard -- would avoid any inconsistent results and unfairness to the
patent owner -- settle any expectations of the inventive community.
Subject: Patent claims--United States
Subject: Patent validity--United States
SNIPER No.: 2013/01520
Author: Smith, Rebecca
Title: Football Dataco Ltd v Stan James plc; Football Dataco Ltd v Sportradar GmbH:
the case and its relevance in Australia
Source: Australian Intellectual Property Law Bulletin. Vol. 26 No. 1, July 2013, pp. 9-12.
Summary: Football Dataco Ltd v Stan James plc; Football Dataco Ltd v Sportradar
GmbH -- Football Dataco commercialises data relating to UK football matches -succeeded in restraining the unlicensed use of that data by the German sports data
provider Sportradar and one of Sportradar's customers, Stan James -- United Kingdom
Court of Appeal decision was based on the European sui generis database right -demonstrates the capacity of a statutory database right to protect investment in large
factual compilations where copyright is unable to assist -- decision is of immediate
relevance to Australian website operators, who will be liable for any infringement of UK
copyright or database right that automatically results from a UK internet user visiting
their website -- development of the law in this area by the UK Court of Appeal is also
likely to be relevant to questions of joint liability in future Australian copyright cases.
Subject: Database rights--case law--United Kingdom
Subject: Intellectual property infringement--liability
SNIPER No.: 2013/01878
Author: Hartwig, Henning
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Title: From idea to design: protection under the 'grace period' in Europe
Source: World Intellectual Property Review. May-June 2013, pp. 46-49.
Summary: It is a long way from initial sketches to a final product -- concern that
sketches and prototypes will be copied when disclosed to potential partners -- design
protection -- if the design is disclosed in Europe protection can be by way of an
unregistered Community design -- protection by registered design if the design was
disclosed outside of the EU -- the grace period -- pitfalls to be avoided when relying on
the grace period -- dependent intermediate publication -- case law.
Subject: Grace periods--Europe
Subject: Industrial design rights--Europe
SNIPER No.: 2013/01757
Author: Ball, Fiona
Title: From Innocent to invalid
Source: Intellectual Property Magazine. July-August 2013, pp. 67-69.
Summary: Cancellation Division of the Office for Harmonization in the Internal Market
(OHIM) -- upheld an application to invalidate two community trade marks belonging to
Fresh Trading due to copyright in the design being owned by the applicant, Deepend
Fresh Recovery -- reminder for businesses of the importance of taking an assignment of
the legal title to commissioned works -- repercussions of failing to do so -- OHIM and
the Innocent case -- the English courts -- what we can learn from OHIM's decision.
Subject: Trade mark cancellation--case law--Europe
Subject: Copyright assignment--case law--Europe
SNIPER No.: 2013/01084
Author: Marie, Aurélia
Title: From research tax credit to innovation tax credit
Source: World Intellectual Property Review. January-February 2013, p. 57.
Summary: French Budget Law for 2013 extends the existing research tax credit (RTC)
to innovation expenses incurred by companies that meet the EU definition of micro,
small and medium-sized enterprises -- modifies different aspects of the 'general
scheme' of the RTC -- tax incentive to encourage research and development (R&D) -tax credit calculated on the basis of the actual R&D expenses -- general scheme -eligible expenses -- new 'Innovation' section -- claims can now be submitted after the
research and innovation operations have begun -- statistics for companies filing a claim
for the RTC.
Subject: Taxation--France
Subject: Innovation (Technological)--France
SNIPER No.: 2013/01664
Author: Calvert, Jon
Title: Full disclosure: the next big thing?
Source: Intellectual Asset Management. No. 60, July/August 2013, p. 61.
Summary: Disclosure of patent portfolios and intellectual property activity -- exposure
of patent ownership as a trend towards fairer business practices -- Microsoft and
Google patent sharing initiatives -- patent licensing opportunities -- MPEG LA/VIA
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licensing agreement -- Eco-Patent Commons -- risks associated with exposing patent
portfolios and IP transactions -- benefits and disadvantages of disclosure.
Subject: Patent disclosure
Subject: Patent licensing
SNIPER No.: 2013/01393
Author: Sutton, Paul J., 1939Title: Future pains for patent NPEs
Source: World Intellectual Property Review. Annual, 2013, pp. 44-46.
Summary: Non-practising entity (NPE) and patent trolls -- no universal agreement on
what constitutes an NPE -- the activities of companies or individuals who accumulate
patents and then file aggressive infringement lawsuits -- strategic effort to extract patent
licensing revenue -- analysis of NPE conduct -- activities not unlawful -- filing at the US
International Trade Commission (ITC) -- Intellectual Ventures (IV) case study.
Subject: Patent trolls
SNIPER No.: 2013/01404
Author: Bharath, M. S.
Title: Good cricket: the case for an IP court in India
Source: World Intellectual Property Review. Annual, 2013, pp. 86-89.
Summary: Need for an IP court in India -- moving towards faster disposal of
proceedings -- opting for the shortest format possible -- IP Appellate Board (IPAB) -aiming for paperless 'e-courts' -- countries including the UK, Thailand, Japan, Malaysia
and China have already set up specialised IP courts -- Delhi High Court has passed an
innovative order allowing cross-examination of a foreign witness by video conference -expedited the trial, saved effort and money -- quantity of cases in a given jurisdiction -vacancies and the availability of judges.
Subject: Intellectual property systems--India
Subject: Intellectual property litigation--India
SNIPER No.: 2013/01742
Author: Dixon, Allen
Title: Good medicine
Source: Intellectual Property Magazine. July-August 2013, pp. 34-35.
Summary: Benefits of intellectual property (IP) -- vital needs of the future depend on IP
-- research into preventing, detecting, treating and managing cancer is a key priority
across the globe -- IP is playing an important role -- developments in cancer-related
research -- medical device company Anaxsys -- Belgian company IBA -- The Philips
company.
Subject: Intellectual property--health and community services industry
Subject: Medical research
SNIPER No.: 2013/01445
Author: Marsoof, Althaf
Title: Google's AdWords stands victorious down under
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Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 6, June 2013, pp.
444-445.
Summary: Google did not engage in misleading or deceptive conduct when showing
advertisements in the course of providing their AdWords service -- Google v The
Australian Competition and Consumer Commission (ACCC), High Court of Australia -section 52 of the Trade Practices Act 1979 (Cth) -- sponsored advertisements using
registered trade mark in its text -- Harvey Travel -- Honda.com.au -- Alpha Dog Training
-- Just 4 x 4 magazine -- ACCC claims -- ACCC appeal to Full Court -- Google appeal to
The High Court -- Google and its similarity to newspaper publishers or broadcasters -'trade mark use' requirement and the Trade Mark Act 1995 (Cth) -- trade mark owners
options against third party advertisers under the Trade Practices Act.
Subject: Google (Firm)
Subject: Keyword advertising--case law--Australia
Subject: Internet
SNIPER No.: 2013/01734
Author: Bennett, Simon
Title: Grape haul of China
Source: Intellectual Property Magazine. July-August 2013, pp. 15-16.
Summary: Goodwill -- collective goodwill that transcends single products -- carries a
certain prestige that is indicative of a certain lifestyle and affluence -- Champagne,
diamonds, caviar -- French champagne industry aggressively protecting its rights
collectively -- seeking to ensure that 'Champagne' does not become a generic label for
'bubbly' -- Comité Interprofessionnel du Vin de Champagne (CIVC) -- reached
agreement with the Chinese authorities to protect Champagne -- luxury brands are in
huge demand in China -- in the United States name Champagne is still not reserved for
products solely made in Champagne -- European Union protection -- international law.
Subject: Geographical indicators--agriculture industry--China
Subject: Geographical indicators--law and legislation
SNIPER No.: 2013/01738
Author: Allan, Jamie
Title: Green shoots
Source: Intellectual Property Magazine. July-August 2013, pp. 24-26.
Summary: Rationale for the patent system -- reward for the inventor -- dissemination
and use of the new product or method -- important for technologies that relate to
environmentally sound technology (EST) -- the patent system -- patent office delays -accelerated examination procedures -- some ESTs within the list of qualifying subject
matter -- allowing fast tracking of patent applications on the basis of their green
credentials -- disadvantages of pushing applications through to grant too quickly -- risk
is often mitigated by keeping patent applications pending -- using the UK Intellectual
Property Office's (UKIPO) Green Channel -- using Patent Box for additional leverage -creative management of the patent family.
Subject: Environmental issues in intellectual property
Subject: Patent filing
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SNIPER No.: 2013/01876
Author: Fijolek, Jack
Title: A growing concern: IP valuation, syndication and execution in Asia
Source: World Intellectual Property Review. May-June 2013, pp. 38-41.
Summary: Historically , the Asia high-tech sector has had to endure a huge peak-totrough gap in inbound to outbound licensing revenues -- Transpacific IP successfully
purchased the Phoenix Technologies patent portfolio with the syndicated backing and
investment of Asian high-tech operating companies -- intricacies of the transaction.
Subject: Value of intellectual property--Asia
Subject: Intellectual property licensing
SNIPER No.: 2013/01301
Author: Rijsdijk, Michiel
Title: Harmonisation in Europe: one step closer
Source: World Intellectual Property Review. March-April 2013, p. 59.
Summary: Interpretation of a patent -- for proper elucidation of Article 69 the European
Patent Convention EPC), a judge should refer to the protocol on its interpretation -according to this protocol a judge has to take a position between two extremes -Supreme Court of the Netherlands case -- AGA v Occlutech -- clarifies how to deal with
the explanation of Article 69 EPC -- Court of Appeal -- the same case also came to
court in the United Kingdom and Germany -- both courts produced a similar outcome -the objectives written in the last sentence of the protocol are important for the
harmonisation of interpretation of Article 69 EPC.
Subject: Harmonisation of laws--Europe
Subject: Patent litigation--Europe
SNIPER No.: 2013/01475
Author: Huthwaite, Thomas
Title: High stakes on the digital high seas: copyright and piracy in the 21st century
Source: Intellectual Property Forum. No. 93, June 2013, pp. 9-28.
Summary: Piracy -- brief history -- radio piracy -- formation of licensing regime for the
broadcast of music -- video cassette recording technology introduced possibility of
copyright infringement -- new age of digital piracy -- development of MP3 technology -file sharing and P2P technology -- Napster lawsuit -- BitTorrent file sharing -- successful
innovation or worldwide epidemic? -- Pirate Bay saga -- role of internet service
providers -- graduated response systems -- other digital developments - cloud services,
streaming and hyperlinking -- Megaupload and Kim Dotcom -- high stakes - the future of
digital IP -- copyright owners' rights
Subject: Copyright
Subject: Copyright infringement--case law
Subject: Copyright owners' rights
Subject: Piracy
SNIPER No.: 2013/01726
Author: Liang, Hui
Title: Highlights of draft amendment to Trademark Law
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Source: China Patents and Trademarks. Vol. 113 No. 2, April 2013, pp. 83-85.
Summary: Trade mark law reform -- China -- registrability of sound and single colour
marks -- applicant communication with trade mark examiners -- trade mark opposition
procedures -- time limits -- defining trade mark use -- fair competition -- enhanced
protection of exclusive rights -- qualification of trade mark attorneys.
Subject: Trade marks--law and legislation--China
Subject: Trade marks--reform--China
SNIPER No.: 2013/01794
Author: Glass, Gregory
Title: Holding back the tide
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 4, April 2013, pp. 11-19.
Summary: Counterfeiting a problem in parts of Asia -- potential profits of selling
counterfeits outweigh the risks of liability -- the online problem -- spotting the fakes -- IP
protection strategies in Asia -- effectiveness of trade mark awareness measures -consumers of counterfeit goods -- economic and health ramifications -- on paper
penalties for infringement severe -- counterfeiters thrive as a result of deficiencies in the
law and their enforcement.
Subject: Counterfeiting--Asia
Subject: Intellectual property enforcement--Asia
SNIPER No.: 2013/01677
Author: Casalonga, Axel
Title: How and when to bring a case before the UPC Central Division
Source: Intellectual Asset Management. Patents in Europe 2013/2014, 2013, pp. 2124.
Summary: Unified Patent Court -- Europe -- composition and features of the Court -exclusive competence -- patent revocation -- invalidity of supplementary protection
certificates (SPCs) -- declarations of non-infringement -- administrative actions -actions with choice of jurisdiction -- non-contracting member state defendants -- no local
or regional court -- infringement actions following revocation -- actions where agreement
required by parties -- infringement actions -- infringements in multiple European
jurisdictions -- infringement actions with revocation pending -- actions where agreement
required between parties and judicial panel.
Subject: Unified Patent Court
Subject: Patent litigation--procedure--Europe
Subject: Legal procedure--Europe
SNIPER No.: 2013/00234
Author: Liang, Hui
Title: How to acquire trademark protection in China through international registration
under the Madrid system
Source: China Patents and Trademarks. Vol. 111 No. 4, October 2012, pp. 50-53.
Summary: China a member state of the Madrid Agreement concerning the International
Registration of Marks -- background information -- opposition procedure -- examination
and provisional refusal procedure -- grant of protection and enforcement -- international
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registration changing into domestic applications due to central attack -assignment/combination/change of registrant's name or address -- substitution of
international registration for domestic registration -- provision pertaining to collective
marks and certification marks
Subject: Madrid Agreement Concerning the International Registration of Marks (1891
April 14). Protocols, etc., 1989 June 27
Subject: Trade mark systems--China
Subject: Trade mark owners' rights--China
SNIPER No.: 2013/00236
Author: Wang, Lu
Title: How to clear up examiners' doubt about excessive amendments to patent
applications
Source: China Patents and Trademarks. Vol. 111 No. 4, October 2012, pp. 74-78.
Summary: Patent law provisions in China relating to amendments -- interpretation of
law provisions relevant to excessive amendment -- Article 33 of the Patent Law-legislative aim in the processing of patent applications -- amendments going beyond the
initial scope of an application -- State Intellectual Property Office (SIPO) more
stringently abide by relevant standards -- analysing technical solutions.
Subject: Patent amendment--law and legislation--China
Subject: Patent processing--China
SNIPER No.: 2013/01923
Author: Warnecke, Michael
Title: How to keep your secrets secret
Source: Managing Intellectual Property. No. 231, July-August 2013, pp. 28-30.
Summary: Trade secrets are undervalued as a way of protecting a company's
intellectual property (IP) -- kinds of information that can be protected is extensive -- to
afford them protection, the IP owner needs to maintain their secrecy -- making sure that
secrets are maintained within a company -- limiting employees' access to certain
information -- minimising the risk of trade secrets being leaked by third parties -considering the adequacy of the company's internal security as it relates to trade
secrets -- ensuring employees and third parties understand their obligation to protect
trade secrets.
Subject: Trade secrets
Subject: Confidentiality agreements
SNIPER No.: 2013/01924
Author: Proulx, Guy L.
Title: How to strategically build an IP portfolio
Source: Managing Intellectual Property. No. 231, July-August 2013, pp. 31-33.
Summary: Companies understand the importance of intellectual property (IP) as assets
-- many do not have a comprehensive acquisition strategy that fits with long term
business goals -- lack of a strategy can result in resources wasted to develop or acquire
patents that are ultimately of little value -- companies need a long term plan -- analysis
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thorough and continual due diligence -- companies can benefit from having plans that
encourage and incentivise employee inventors in order to develop IP portfolios
internally.
Subject: Intellectual property management
Subject: Patent rights
SNIPER No.: 2013/01473
Author: Sexton, Christopher
Title: Human gene patenting back in the dock
Source: Intellectual Property Forum. No. 93, June 2013, pp. 2-5.
General Note: See also 2010/02225
Summary: Update on the author's article in the September 2010 issue of IP Forum -Myriad genetics case in the United States -- "one of the most controversial biotech
patent cases in legal history" -- US Supreme Court to evaluate claims under the 'product
of nature' exception with a decision expected in June 2013 -- patenting of genes -Federal Court of Australia upheld Myriad's patent for screening methods for mutations in
the BRCA1 gene -- claimed nucleic acid is isolated from native DNA and is patentable -Cancer Voices Australia and Yvonne D'Arcy have appealed
Subject: Patenting of life forms--Australia
Subject: Genes--patentability--Australia
SNIPER No.: 2013/01806
Author: Jarvis, Joshua
Title: ICANN launches Trademark Clearinghouse
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 3, March 2013, pp. 4546.
Summary: Internet Corporation for Assigned Names and Numbers (ICANN) launched
Trademark Clearinghouse (TMCH) -- definition of the Trademark Clearinghouse -- what
safeguards the TMCH facilitates-- sunrise period -- what the TMCH does not do -- trade
mark claims -- application process -- encouragement for companies to participate -aims to combat cybersquatting.
Subject: Domain name registration
Subject: Trade mark enforcement
Subject: Domain name registries
SNIPER No.: 2013/01863
Author: Tatchell, Laura
Title: If it is good enough for James Bond, is it good enough for you?: an analysis of the
legal implications of product placement
Source: Australian Intellectual Property Law Bulletin. Vol. 26 No. 2, August 2013, pp.
22-27.
Summary: Common practice to incorporate branded products in film and television
without a brand owner's consent -- aspects to consider before launching cease and
desist letters for unauthorised use of a client's brand -- in most cases, product
placement is beneficial to the brand owner -- subconscious advertising to a mass
audience by depicting a branded product in a positive and non-commercial context -- 61 -
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sense of authenticity by exposing audiences to brands they see every day -- effect on a
brand's popularity and sales -- real examples of negative and unauthorised product
placements -- associated legal risks.
Subject: Marketing--culture and entertainment industry--Australia
Subject: Trade mark infringement--case law
SNIPER No.: 2013/01977
Author: Pham, Nam D.
Title: The impact of innovation and the role of intellectual property rights on U.S.
productivity, competitiveness, jobs, wages and exports
Source: Impact of Innovation and the Role of Intellectual Property Rights on U.S.
Productivity, Competitiveness, Jobs, Wages and Exports. 2012.
Summary: Economic impacts of innovation and IP protection on the economy of the
United States -- study covers 27 tradable manufacturing and non-manufacturing
industries that the U.S. International Trade Commission reports export and import
values during 200-2007 -- findings indicate innovation is a crucial driver of
competitiveness, growth and value -- IP-intensive industries create jobs and spur
economic growth as results from high investments in research and development (R&D)
-- protecting the IP derived from innovation is essential to the future of a wide range of
American industries.
Subject: Intellectual property rights--economics--United States
Subject: Economic development--research--United States
Subject: Industries--research--United States
SNIPER No.: 2013/01791
Author: Johnson, Phillip
Added author: UK Intellectual Property Office
Title: The impact of lookalikes: similar packaging and fast-moving consumer goods
Source: Impact of Lookalikes. April 2013.
Summary: Examines the area of lookalike consumer goods and attempts to provide a
working definition of a "lookalike" -- examines the impact of such goods on consumers,
retailers and brand owners -- consumer surveys and analyses of sales figures and
stakeholder opinions -- brand owners generally considered that the law of passing-off
provides insufficient protection -- lookalikes do not typically generate confusion as to
origin, a prerequisite to grounding a claim in passing-off -- considered the prevention of
lookalikes is within the scope of the Unfair Commercial Practices Directive (2005/29/EC)
-- issue become prominent on the agenda of the European Union -- in the context of socalled "freeriding" in relation to trade mark law -- with respect to possible unfair
commercial practices.
Subject: UK Intellectual Property Office
Subject: European Parliament. Directive 2005/29/EC of the European Parliament and
of the Council of 11 May 2005 concerning unfair business-to-consumer commercial
practices in the internal market and amending Council Directive 84/450/EEC, Directives
97/7/EC, 98/27/EC and 2002/65/EC of the European Parliament and of the Council and
Regulation (EC) No 2006/2004 of the European Parliament and of the Council
Subject: Trade dress--statistics
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Subject: Trade mark infringement--United Kingdom
Subject: Brand management--United Kingdom
SNIPER No.: 2013/01671
Author: Luna, Alejandro
Title: Imports shine the spotlight on experimental use defence
Source: Intellectual Asset Management. No. 60, July/August 2013, pp. 121-124.
General Note: IAM Supplement: IP in the Life Science Industries 2013.
Summary: Experimental use -- Mexico -- publication of pharmaceutical formulation
patents -- regulating import permits -- patent infringement -- preliminary injunctions -customs measures -- tensions between experimental use and Roche-Bolar defence.
Subject: Patent infringement--pharmaceutical industry--Mexico
Subject: Experimental use (Patents)--pharmaceutical industry--Mexico
SNIPER No.: 2013/01474
Author: Nash, Alan
Title: In conversation with the Honourable Justice John Middleton
Source: Intellectual Property Forum. No. 93, June 2013, pp. 6-8.
Summary: Profile of the judicial and legal career of Federal Court of Australia judge,
John Middleton -- first big case was BHP v Fortescue -- opinions on different aspects of
his job -- now a part-time Commissioner for the Australian Law Reform Commission
Subject: Middleton, John--interviews
Subject: Lawyers--Australia
SNIPER No.: 2013/01396
Author: Leonardos, Luiz
Title: In defence of champagne
Source: World Intellectual Property Review. Annual, 2013, pp. 55-56.
Summary: Recognition in Brazil of the French region Champagne as a geographical
indication -- champagne can only identify sparkling wines from the famous French
region -- decision brings an end to a long-standing trade dispute between Brazil and
France -- protection for indications of source differ from appellations of origins -- Article
24.4 of the TRIPS Agreement -- sign that the Brazilian Government will continue it's
efforts to improve protection of IP rights in the country.
Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994
April 15)
Subject: Intellectual property rights--Brazil
Subject: Geographical indicators--France
SNIPER No.: 2013/01409
Author: González-Rodriguez, Consuelo
Title: In the balance: is Madrid good for Mexico
Source: World Intellectual Property Review. Annual, 2013, pp. 104-106
Summary: Mexico a member of the Madrid Protocol -- under the protocol it is possible
to convert international registrations into national registrations -- this is not possible
under the Madrid Agreement -- Madrid Protocol provides advantages to users -- a single
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payment for renewal -- a single recordal for an assignment -- changes of domicile -unsure if using the Protocol is right for everybody -- chart overviews the proceedings
that follows a registration in which Mexico has been designated -- broad descriptions of
trade marks prevents the dilution of the mark by coexistence admitted by the IMPI
(Mexican Institute of Industrial Property) when similar marks are registered in the same
class -- use of local counsel in Mexico -- Madrid Protocol offers a good alternative for
protection.
Subject: Madrid Agreement Concerning the International Registration of Marks (1891
April 14). Protocols, etc., 1989 June 27
Subject: Intellectual property rights--Mexico
Subject: Trade mark registration--Mexico
SNIPER No.: 2013/01408
Author: Eskola, Petri
Title: In the fast lane: new IP proceedings
Source: World Intellectual Property Review. Annual, 2013, pp. 102-103.
Summary: Civil IP matters in Finland to be centralised from the general district courts to
the Market Court in 2013 -- objective to improve the efficiency of IP judicial proceedings
-- fast-track IP proceedings and increased expertise -- restricted possibility of appeal -judgment of the Market Court become enforceable in an expedient manner -- higher
expertise of judges -- will hear civil IP infringement and validity actions.
Subject: Intellectual property--reform--Finland
Subject: Intellectual property litigation--reform--Finland
SNIPER No.: 2013/01300
Author: Adames, Victor M.
Title: Inconsistency for requesting a power of attorney
Source: World Intellectual Property Review. March-April 2013, p. 58.
Summary: Amendment of the Mexican Industrial Property Law in 2010 -- power of
attorney for representation purposes has not been needed to file a trade mark
application -- provisions allow to file a trade mark or slogan application -- renew a trade
mark or slogan registration -- file writs regarding the recordal of a corporate change
before the Mexican Trademark Office without a power of attorney -- made the gathering
of documentation to file applications or writs easier for trade mark owners -- amendment
is not complete due to the fact that you can only state one individual, as a legal
representative -- power of attorney is needed when a trade mark owner wishes to
request a recordal of a change of address.
Subject: Legal procedure--Mexico
Subject: Trade mark processing--Mexico
SNIPER No.: 2013/01798
Author: Rana, Lucy
Title: India joins Madrid
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 4, April 2013, pp. 33-35.
Summary: India accedes to the Madrid Protocol -- expected growth in international
applications-- advantages of international registration of marks -- the road ahead -- 64 -
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growth in registrations under the Madrid system -- expected impact of international
registration of marks on the domestic market -- applications of international registrations
by office of origin.
Subject: Madrid Agreement Concerning the International Registration of Marks (1891
April 14). Protocols, etc., 1989 June 27.
Subject: Intellectual property systems--India
SNIPER No.: 2013/01933
Author: Check Hayden, Erika
Title: India spurns cancer patents
Source: Nature. Vol. 500 No. 7462, 15 August 2013, p. 266.
Summary: India attempting to cap the high cost of drugs to treat non-infectious
diseases -- series of decisions to limit patents on pricey brand-name medications -patent revoked on modified version of breast cancer drug Tykerb from GlaxoSmith Kline
-- patent not granted on a version of Roche's drug trastuzumab, sold as Herceptin -patents already protect both drugs -- World Health Organization push for international
treaty supporting development of lower cost medicines with prizes and research funding
instead of patents -- pressure on drug companies to adopt differential pricing models
bases on people's ability to pay -- possibility of compulsory licence on these drugs in
India
Subject: Pharmaceuticals--India
Subject: Patent applications--pharmaceutical industry--India
Subject: Compulsory licensing--pharmaceutical industry
SNIPER No.: 2013/00163
Author: Coombe, Rosemary J.
Title: Indigenous cultural heritage in development and trade: perspectives from the
dynamics of cultural heritage law and policy
Source: Graber, Christoph B., et al. (eds.), International trade in indigenous cultural
heritage: legal and policy issues. Cheltenham, U.K.: Edward Elgar, 2012. pp. 272-305.
Summary: Terrain within which questions of intangible cultural heritage law and policy
have emerged as international issues through United Nations Educational, Scientific
and Cultural Organization (UNESCO) Conventions and their implementation -development of these instruments and their interpretation and operation over time -growing international acknowledgement of the significance of intangible cultural heritage
as fundamental to human rights -- sustainable development based on the development
of human capacities -- specificity of indigenous concerns -- difficulties of reconciling
practices of international trade with those of safeguarding and revitalising intangible
cultural heritage -- trade-based implications of this history -- proposals for the creative
deployment of certain intellectual property vehicles that might encompass and advance
indigenous development and self-determination in trade contexts.
Subject: Traditional cultural expressions
Subject: International trade
SNIPER No.: 2013/00154
Author: Champagne, Duane
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Title: Indigenous self-government, cultural heritage and international trade: a
sociological perspective
Source: Graber, Christoph B., et al. (eds.), International trade in indigenous cultural
heritage: legal and policy issues. Cheltenham, U.K.: Edward Elgar, 2012.
pp. 31-58.
Summary: International agencies giving more attention to formulating international laws
for regulating intellectual property rights in ways more agreeable to indigenous peoples
-- encourage greater cultural expression, value, creativity and productivity -- newly
focused attention is a product of indigenous peoples voicing their views against the nonconsensual commodification of many aspects of indigenous culture -- interpretation of
indigenous social, political and cultural organisation in the language of the social
sciences -- processes of social change with special reference to the social construction
of markets and indigenous subsistence markets -- criteria are suggested for guiding
negotiations on international law-making about indigenous cultural heritage or property - criteria and conditions under which indigenous peoples may negotiate and accept
international law and regulation of their, cultural production.
Subject: Traditional cultural expressions
Subject: International trade
SNIPER No.: 2013/01750
Author: Ríos, Agustín
Title: Industrial craft
Source: Intellectual Property Magazine. July-August 2013, pp. 51-52.
Summary: Simple definition of intellectual property -- industrial property and copyrights
-- applied artwork ruled by federal copyrights law -- industrial designs ruled by industrial
property law -- no definition of industrial design or applied artwork in Mexican legislation
-- attaining a definition of such concepts from different sources -- one same original
object may be subject to protection as an industrial design and at the same time as
applied artwork, provided the conditions stated by each of the applicable legislations are
met -- benefits of double protection.
Subject: Industrial designs--Mexico
Subject: Copyright owners' rights--Mexico
SNIPER No.: 2013/01080
Author: Licks, Otto B.
Title: Industrial design in Brazil
Source: World Intellectual Property Review. January-February 2013, p. 53.
Summary: Industrial design rights protect the visual features of a product -- Brazilian
Design Statute -- applications -- registration -- filing of an application before the Brazilian
IP Office (INPI) -- presentation of the specifications and claims -- INPI does not make a
substantive examination regarding the application -- a product can be protected by more
than one industrial property right -- industrial design protection can be granted to
components of a complex product -- possibility of obtaining industrial design protection
for spare parts.
Subject: Industrial design rights--Brazil
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SNIPER No.: 2013/01962
Author: Longdin, Louise
Title: Inexhaustible distribution rights for copyright owners and the foreclosure of
secondary markets for used software
Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 44
No. 5, August 2013, pp. 541-568.
Summary: Intellectual property rights and the doctrine of first sale -- sidestepping
exhaustion rights in software transactions -- European approach -- asymmetry between
copyright and contract in distribution arrangements -- sales and licences -- differing
judicial opinions in the United States -- patented software and the first sale doctrine -distribution arrangements from a competition law perspective -- whether users have
acquired software products in physical form, such as DVDs, chips, mobile phones and
electronic tables, or downloaded them electronically -- resisting the trend towards an
inexhaustible right of distribution for software owners
Subject: Copyright exhaustion--information technology industry
Subject: Copyright licensing--information technology industry
Subject: Computer-related inventions
Subject: Competition (Economics)--information technology industry
SNIPER No.: 2013/01179
Author: Caenegem, William van, 1961Title: Infringement of patents for new uses of known drugs: lessons from recent cases
Source: Australian Intellectual Property Law Bulletin. Vol. 25 No. 9, April-May 2013, pp.
187-190.
Summary: In Australia, a patent may be granted for a new therapeutic use of a known
drug -- for new dosage regimes -- administrations of known drugs -- three recent cases
where the Federal Court considered what amounts to infringement of these patents -infringed only if the medication is prescribed or supplied for the new therapeutic purpose
(a new indication) -- not if they are prescribed to treat some other condition -- different
ways in which infringement can arise -- s. 117 infringement by supply -- infringement by
a prescribing doctor -- Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd -- Generic
Health Pty Ltd v Otsuka Pharmaceutical Co Ltd -- Apotex Pty Ltd v AstraZeneca AB.
Subject: Patent infringement--case law--Australia
Subject: Pharmaceuticals--Australia
Subject: Medical procedures--case law--Australia
SNIPER No.: 2013/01667
Author: Bishop, Maximilienne
Title: Injunctions in the post-Apple world
Source: Intellectual Asset Management. No. 60, July/August 2013, p. 108.
Summary: Patent infringement -- injunctions -- United States -- need to show infringing
feature is driving customer demand -- change to long-standing court practice on
injunctions -- Apple Inc. v. Samsung Electronics Co. (Apple I and Apple II) -- causal link
between infringing feature and irreparable harm to patentee -- reduced ability for
patentee to obtain injunctions against sale of downstream products.
Subject: Injunctions--case law--United States
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Subject: Patent infringement--case law--United States
Subject: Information technology industry--case law--United States
SNIPER No.: 2013/01815
Author: Mikuriya, Kunio
Title: Innovative responses from the customs community to the evolving challenges
posed by counterfeiting and piracy
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
28-32.
Summary: Mission of the World Customs Organization (WCO) -- improve the
effectiveness of customs administrations in terms of facilitating and securing
international trade -- impact of illicit trade in counterfeit and pirated goods -- wide and
rapid dissemination of counterfeit and pirated goods over the Internet -- continuous and
evolving challenges for customs authorities -- WCO strengthening partnerships with
other international organisations -- stepped up collaboration with the business
community -- intertwined challenges and a multi-pronged approach -- operations and
multi-faceted impact -- understanding differences -- communication -- evolving
challenges, innovative responses -- commitment to innovation.
Subject: Customs
Subject: Counterfeiting
Subject: Piracy
SNIPER No.: 2013/01284
Title: Inside the PCC: an interview with Colin Birss
Source: World Intellectual Property Review. March-April 2013, pp. 22-24.
Summary: Interview with presiding judge of the Patents County Court (PCC), Colin
Birss -- rationale behind establishing the PCC -- secret of the PCC's success -- PCC's
most significant case so far -- benefits of the PCC over the High Court -- challenges
faced by the PCC -- reconstitution of the PCC -- PCC model in other jurisdictions -access to justice in intellectual property for small organisations.
Subject: Birss, Colin--interviews
Subject: Intellectual property industry--interviews
SNIPER No.: 2013/01936
Author: Organisation for Economic Co-operation and Development. Directorate for
Science, Technology and Industry
Title: Intellectual assets and innovation: the SME dimension
Source: OECD Studies on SMEs and Entrepreneurship. 6 December 2011.
Summary: Few regulatory frameworks or specific instruments directed to SMEs -relationship between SME intellectual asset management, innovation and
competitiveness in different national and sectoral contexts -- insights on the ability of
SMEs access and utilise the protection systems available to them -- identifies key
challenges for SMEs in appropriating full value from IPRs -- investigates effectiveness
of regulatory frameworks and policy measures to support SME access to IPRs -identifying best practices -- proposing policy recommendations.
Subject: Small and medium enterprises
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Subject: Economic development
Subject: Innovation (Technological)
SNIPER No.: 2013/02011
Added author: United States. Government Accountability Office
Title: Intellectual property: assessing factors that affect patent infringement litigation
could help improve patent quality
Source: Intellectual Property Assessing Factors That Affect Patent Infringement. 2013
General Note: Government Document no. GAO-13-465.
Summary: Report to Congressional Committees -- key factors contributing to increased
recent patent infringement lawsuits -- unclear property rights -- potential for large
monetary awards from the courts -- recognition by companies that patents are a more
valuable asset -- new initiatives by the judicial system -- patent pilot program -- new
rules in some federal court districts -- recommends U.S. Patent and Trademark Office
(PTO) consider examining trends in patent infringement litigation -- consider linking this
information to internal patent examination data to improve patent quality and
examination
Subject: Intellectual property--policy
Subject: Patent litigation--United States
Subject: Patent infringement--United States
SNIPER No.: 2013/00158
Author: Antons, Christoph
Title: Intellectual property rights in indigenous cultural heritage: basic concepts and
continuing controversies
Source: Graber, Christoph B., et al. (eds.), International trade in indigenous cultural
heritage: legal and policy issues. Cheltenham, U.K.: Edward Elgar, 2012. pp. 144-174.
Summary: Traditional cultural expressions (TCEs) -- post-war developments -formation of the United Nations (UN) -- emphasis on human rights in the UN Charter -development programmes for indigenous peoples -- recognition of indigenous rights in
ILO Convention No. 107 of 1957 Concerning the Protection and Integration of
Indigenous and Other Tribal and Semi-Tribal Populations in Independent Countries -decolonisation movements initiated or renewed a parallel debate about the repatriation
of items of cultural heritage -- intellectual property (IP) perspective to the debate on
international trade in indigenous cultural heritage -- options for legal protection of TCEs
and expressions of folklore (EoF) -- position of developing countries in international
negotiations -- examples drawn from Asian developing countries.
Subject: Traditional cultural expressions
Subject: Traditional knowledge
SNIPER No.: 2013/01976
Author: Denton, Adam
Author: International Telecommunications Union
Title: Intellectual property rights in today's digital economy
Source: Intellectual Property Rights in Today's Digital Economy. 2011.
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General Note: GSR 2011 Discussion paper, as presented at 11th Global Symposium
for Regulators (GSR11), 21 to 23 September 2011.
Summary: Growth of the digital economy -- who is impacted by copyright and copyright
infringement -- institutional overview -- intellectual property rights institutions and
treaties -- IPR enforcement -- how to protect copyright and consumers in the digital
environment -- types of digital infringement -- protecting copyright -- challenges, risks
and regulatory responses -- implications for telecoms regulators.
Subject: Electronic copyright
Subject: Copyright infringement
SNIPER No.: 2013/01975
Author: Chu, Angus C.
Added author: Universität München
Title: Intellectual property rights, technical progress and the volatility of economic
growth
Source: MPRA Paper (University of Munich). No. 38132, April, 2012
Summary: Effects of intellectual property rights on the volatility of economic growth -strengthening of patent protection -- increase in R&D in the United States to coincide
with a reduction in growth volatility beginning in the 1980s -- development of an R&Dbased growth model with aggregate uncertainty in the innovation process -- application
of the model -- increasing patent strength.
Subject: Intellectual property rights--economics--United States
Subject: Patents--research
SNIPER No.: 2013/01765
Author: Ekstrand, Victoria Smith, 1966Title: The intensification of copyright: critical legal activism in the age of digital copyright
Source: IDEA: the Intellectual Property Law Review. Vol. 53 No. 3, 2013, pp. 291-322.
Summary: Free culture movement in intellectual property law -- inspired by Critical
Legal Studies (CLS) -- call for radical legal reform -- copyright policy and debate -decade-long copyfight -- inspired by the principles of CLS and strengthened by
"intensification" -- resistance that uses the controlling structures of society rather than
just fighting against them -- critical legal responses to efforts to increase IP protections - indeterminacy of the fair use doctrine -- copyright response to the growth of copyright
regulation -- methods of reform and resistance by activists challenging the system -new kind a dialogue about IP law -- inclusionary, participatory and capable of effecting
change -- called "critical legal activism" by the authors
Subject: Copyright--reform--United States
Subject: Copyright--law and legislation--United States
SNIPER No.: 2013/00155
Author: Scott, John
Title: International indigenous and human rights law in the context of trade in
indigenous cultural heritage
Source: Graber, Christoph B., et al. (eds.), International trade in indigenous cultural
heritage: legal and policy issues. Cheltenham, U.K.: Edward Elgar, 2012. pp. 61-87.
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Summary: Indigenous peoples' rights a priority in the context of the development of
international law -- translated into a number of legal instruments -- led to the need to
reconsider certain legal concepts -- traditionally structured on the basis of the western
point of view and focused on individual rights -- legal understanding of cultural heritage - specificity of trade in indigenous cultural heritage -- aspects not currently addressed in
international law -- possible solutions de lege ferenda -- background for understanding
the issues at hand through analysing some preliminary concepts -- 'working definitions'
of indigenous peoples, cultural heritage, traditional cultural expressions and traditional
knowledge -- status of indigenous peoples' rights in international law.
Subject: Traditional cultural expressions
Subject: Human rights
Subject: International law
SNIPER No.: 2013/01817
Author: Drakopoulos, Panagiotis
Title: International strategies for fast-moving consumer goods
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
38-41.
Summary: Factors contributing to unprecedented levels of counterfeiting -- situation
regarding fast-moving consumer goods (FMCGs) -- strategies to fight counterfeiting in
the sector -- case examples -- benefits of combating counterfeiting.
Subject: Counterfeiting
Subject: Intellectual property enforcement
SNIPER No.: 2013/00161
Author: Tsosie, Rebecca
Title: International trade in indigenous cultural heritage: an argument for indigenous
governance of cultural property
Source: Graber, Christoph B., et al. (eds.), International trade in indigenous cultural
heritage: legal and policy issues. Cheltenham, U.K.: Edward Elgar, 2012. pp. 221-245.
Summary: Possibilities, advantages and limits of adjusting international trade law to
protect indigenous cultural heritage -- international law dimensions of tangible forms of
indigenous cultural property, as a distinctive category of cultural heritage -- how
indigenous peoples are defined within international cultural property law -- how that
body of law handles questions of indigenous culture -- definitions of traditional
knowledge and traditional cultural expressions -- how indigenous peoples are
represented, procedurally or otherwise, within international organisations and
institutions.
Subject: Traditional cultural expressions
Subject: International trade
SNIPER No.: 2013/00167
Author: Bowrey, Kathy
Title: International trade in indigenous cultural heritage: an Australian perspective
Source: Graber, Christoph B., et al. (eds.), International trade in indigenous cultural
heritage: legal and policy issues. Cheltenham, U.K.: Edward Elgar, 2012. pp. 396-438.
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Summary: Protection of Aboriginal and Torres Strait Islander traditional cultural
expressions (TCEs) and traditional knowledge (TK) is a very significant specialisation in
Australia -- reports and academic literature commenting on the nature of the problems -progress to date -- aspirations to do better -- overview of the issues -- importance of
appreciating law and rights in terms of the domestic political context.
Subject: Traditional cultural expressions--Australia
Subject: International Trade
SNIPER No.: 2013/00159
Author: Girsberger, Martin A., 1968Title: International trade in indigenous cultural heritage: an IP practitioners' perspective
Source: Graber, Christoph B., et al. (eds.), International trade in indigenous cultural
heritage: legal and policy issues. Cheltenham, U.K.: Edward Elgar, 2012. pp. 175-195.
Summary: Indigenous cultural heritage (lCH) -- traditional knowledge (TK) -- traditional
cultural expressions (TCEs) -- important topic at the international level -- ICH discussed
at international fora -- participants with greatly diverging views and interests -- resolving
issues related to ICH requires answers to numerous complex questions -- issues may
be highly controversial from a political point of view -- many issues remain unresolved -discussions resulted in different forms of international instruments -- international efforts
to protect TK and TCEs by existing or currently discussed measures in the intellectual
property (IP) system -- negotiations in the Intergovernmental Committee on Intellectual
Property and Genetic Resources, Traditional Knowledge and Folklore (IGC) of the
World Intellectual Property Organization (WIPO) -- funding of the participation of
indigenous representatives in the negotiations of the IGC through the WIPO Voluntary
Fund -- 'procedural approach to interfacing global law and local traditions' from an
international intellectual property perspective.
Subject: Traditional cultural expressions
Subject: International trade
SNIPER No.: 2013/00164
Author: Bandarin, Francesco
Title: International trade in indigenous cultural heritage: comments from UNESCO in
light of its international standard-setting instruments in the field of culture
Source: Graber, Christoph B., et al. (eds.), International trade in indigenous cultural
heritage: legal and policy issues. Cheltenham, U.K.: Edward Elgar, 2012. pp. 306-328.
Summary: United Nations Educational, Scientific and Cultural Organization (UNESCO)
-- specific mandate for culture -- elaborated a significant body of conventions in this
field -- cornerstones of international heritage law -- UN Declaration on the Rights of
Indigenous Peoples (UNDRIP) -- international trade and sustainable development -how the UNESCO conventions in the field of culture articulate culture and trade -relationship between trade and the safeguarding and promotion of cultural heritage -how might this affect indigenous peoples' cultural heritage within international trade? -convention that UNESCO developed the field of culture -- normative instruments
through the lens of indigenous peoples' rights -- how the different conventions relate to
issues of trade.
Subject: Traditional cultural expressions
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Subject: International trade
SNIPER No.: 2013/00162
Author: Kuprecht, Karolina
Title: International trade in moveable tangible cultural heritage of indigenous peoples: a
European perspective
Source: Graber, Christoph B., et al. (eds.), International trade in indigenous cultural
heritage: legal and policy issues. Cheltenham, U.K.: Edward Elgar, 2012. pp. 246-271.
Summary: New international awareness of indigenous cultural property in the context
of trade -- how the law deals with the existing international human rights standards -looks from a European point of view at international and European cultural property law,
still far from implementing indigenous cultural property human rights standards in a
satisfactory encompassing way -- basic legal limits which work as major obstacles
against legislative solutions for indigenous people's cultural property claims -alternative ways of resolution -- voluntary activities going on in Europe for dealing with
indigenous cultural property claims -- Christoph Graber's proposal for a procedural
approach -- whether procedures of alternative dispute resolution or cultural diplomacy
could work as a complementary or alternative solution to substantive law in
implementing the international human rights standards for indigenous cultural property.
Subject: Traditional cultural expressions
Subject: International trade
SNIPER No.: 2013/01764
Author: Bryan, Jason W.
Title: Interview practice
Source: Intellectual Property Magazine. July-August 2013, pp. 86-87.
Summary: Companies are under significant pressure to control costs -- the American
Invents Act (AIA) fee schedule increased many fees -- take advantage of examiner
interviews to streamline and shorten the prosecution process -- maximise the benefits of
the interview process -- how to conduct the interview -- when to conduct the interview -what to 'bring' to the interview -- after the interview is complete.
Subject: Patents--costs
Subject: Patent examination
SNIPER No.: 2013/01754
Author: Rajić, Tanja
Title: Into the fold
Source: Intellectual Property Magazine. July-August 2013, pp. 59-60.
Summary: Croatia ready to join the European Union (EU) -- EU's Screening Report on
the intellectual property (IP) in Croatia -- shortcomings in the prosecution and
enforcement of IP rights -- adoption of significant amendments to all IP-related laws -Trademark Act -- inauguration of the Community Trademark (CTM) -- launching of the
Board of Appeal -- Industrial Design Act -- changes to present practice -- State
Intellectual Property Office of the Republic of Croatia (SIPO) prosecution procedure.
Subject: Trade marks--law and legislation--Croatia
Subject: Intellectual property law--reform--Croatia
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SNIPER No.: 2013/01910
Author: Wakefield, Melanie
Title: Introduction effects of the Australian plain packaging policy on adult smokers: a
cross-sectional study
Source: BMJ Open. Vol. 3 No. 7 e003175, 22 July 2013.
Summary: Study to determine whether smokers smoking from packs required under
Australia's plain packaging law had different smoking beliefs and quitting thoughts,
compared to those still smoking from branded packs -- conclusions from survey of 536
cigarette smokers in Victoria -- early indication that plain packaging is associated with
lower smoking appeal -- more support for the policy -- more urgency to quit among adult
smokers
Subject: Trade dress--Australia
SNIPER No.: 2013/01852
Author: Kappos, David
Title: Investing in America's future through innovation: how the debate over smart
phone patent wars (re)raises issues at the foundation of long-term incentive systems
Source: Stanford Technology Law Review. Vol. 16 No. 3, Spring 2013, pp. 485-501.
Summary: Need for America to continue to seek a balance between short-term
consumer interests and long term investments required for innovation -- evidence
shows that smart phone patent wars are not about low quality software patents or an
ineffective patent system -- software patents involved in the smart phone wars mostly
found to be valid --The America Invents Act addresses many challenging issues
involving software patents -- other issues with software patents being addressed by the
USPTO and America's innovation community -- debate over software patents reflects
America's commitment to innovation and to struggling with hard challenges around
innovation
Subject: Patent systems--United States
Subject: Innovation (Technological)--United States
Subject: Computer-related inventions--United States
Subject: Patent litigation--communication services industry--United States
SNIPER No.: 2013/01518
Author: Kee, Chian
Title: IP licences, franchises and cartels: where does your agreement stand?
Source: Australian Intellectual Property Law Bulletin. Vol. 26 No. 1, July 2013, pp. 2-5.
Summary: Value of a well drafted licensing agreement -- different types of agreement
for various purposes -- how intellectual property (IP) lawyers can discern whether an IP
licensing agreement could be characterised as a "franchise agreement" for the
purposes of the Franchising Code of Conduct -- Franchising Code imposes certain
obligations on the franchisor that are given statutory weight under the Competition and
Consumer Act (CCA) 2010 -- some of the indicators IP lawyers can look for to see if
their agreement is straying into the realm of cartel conduct under the CCA -- various
options to avoid a competition law breach.
Subject: Intellectual property licensing--Australia
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Subject: Franchising--law and legislation--Australia
SNIPER No.: 2013/01399
Author: Sugimura, Kenji
Title: IPS cells technology spurs biological patenting in Japan
Source: World Intellectual Property Review. Annual, 2013, pp. 66-68.
Summary: Understanding how the Japanese Patent Office interprets specific patent
requirements -- key to capitalising on the expansion of biological invention patentability - development in induced pluripotent stem (IPS) -- clinical applications to the healthcare
market -- Japanese firms to understand how to draft patent applications that best
protect this new biotechnology – biotech industry booming in Japan -- patenting
biological inventions -- requirement for industrial applicability as stated in the Japanese
Patent Act -- claim scope -- prior art and advantageous effect.
Subject: Japan. Tokkyochō
Subject: Biotechnology industry--law and legislation--Japan
Subject: Patentability--biotechnology industry--Japan
SNIPER No.: 2013/01767
Author: Clifford, Ralph D., 1954Title: Is it time for a Rule 11 for the patent bar?
Source: IDEA: the Intellectual Property Law Review. Vol. 53 No. 3, 2013, pp. 351-369.
Summary: Patent quality problem in the United States -- one reason is the failure to
require the patent bar to be completely candid in its dealings with the USPTO -- current
rules of disclosure for patent representatives -- Rule 1.56(a) and Rule 11.18 -assertions made on knowledge and belief -- assertions made on reasonable belief -consequences of current rules -- professional rule of disclosure imposed on trial
attorneys -- Federal Rule of Civil Procedure 11 -- proposal for a FRCP 11 like obligation
of patent representatives as they draft applications -- time to require patent attorneys
and agents to do a reasonable prior art investigation before submitting a patent
application
Subject: Patent attorneys--United States
Subject: Intellectual property industry--United States
SNIPER No.: 2013/01277
Author: Gervais, Daniel J., 1963Title: Is profiting from the online use of anothers' property unjust?: the use of brand
names as paid search keywords
Source: IDEA: the Intellectual Property Law Review. Vol. 53 No. 2, 2013, pp. 131-171.
Summary: Whether it is unjust for Google to profit from the use of another's brand in its
AdWords program -- opinions have applied trade mark law when evaluating liability -consensus view finds no infringement by Google even though Google profits from sales
while brand owners may suffer -- whether this misuse is wrong -- need to look beyond
trade mark law for a remedy -- relevant legal doctrines -- property rights, equity and
common law -- unjust enrichment as the basis of liability and remedy for the
unauthorized, profitable and wrongful use of another's property -- would impose
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reasonable limits on the use of brand names in AdWords -- application of preemption
principles to paid search keyword programs
Subject: Keyword advertising
Subject: Brand management
SNIPER No.: 2013/01724
Author: Hu, Gang
Title: Issue of law relating to use of trademarks in export-oriented OEM: interpretation
of recent relevant judicial precedents
Source: China Patents and Trademarks. Vol. 113 No. 2, April 2013, pp. 68-72.
Summary: Trade mark use in original equipment manufacturing (OEM) that is
manufactured for export -- Chinese case law -- cancellation for non-use -SCALEXTRIC mark -- likelihood of confusion -- JoLida trade mark and device -unregistered marks, first-to-file principle and later registrations -- wu yin liang pin mark -analysis and explanation of legal issues.
Subject: Trade mark use--manufacturing and processing industry--China
SNIPER No.: 2013/01978
Author: Weinberg, Michael
Title: It will be awesome if they don't screw it up: 3D printing, intellectual property and
the fight over the next great disruptive technology
Source: It Will Be Awesome if They Do Not Screw It Up. November 2010.
General Note: A Public Knowledge publication.
Summary: 3D printing a technological opportunity -- a printer that can turn a blueprint
into a physical object -- once a CAD design exists it can be widely distributed just like
any other computer file -- technology is vulnerable to restriction through intellectual
property law -- copyright protected sculptures will be replicated without permission -creating original products -- patent law does have a novelty requirement but does not
allow for parallel creation -- unauthorised reproductions are an infringement -- sharing
designs on the internet amplifies the problem -- trade mark use in commerce -- dilution
-- design patents -- trade dress -- expansion of contributory infringement of a patent.
Subject: Intellectual property rights--manufacturing and processing industry
Subject: Intellectual property enforcement--manufacturing and processing industry
Subject: Copyright--manufacturing and processing industry
SNIPER No.: 2013/01922
Author: Sands, Patrick
Title: It's finally here: Australia's new patent regime
Source: Managing Intellectual Property. No. 231, July-August 2013, pp. 25-27.
Summary: Australia's Raising the Bar Act -- substantive and procedural changes to
Australia's patent system -- raises validity standards by requiring a standard new written
description and enablement ground -- applications are now subjected to a global
universe of common general knowledge -- usefulness threshold has been raised -introduces infringement exemptions for experimental use -- acts connected to securing
required regulatory approval -- will bring Australia's patent system in line with other
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major jurisdictions -- rights holders will face initial uncertainty about how the new
provisions will be applied by the Patent Office and the courts.
Subject: Australia. Intellectual Property Laws Amendment (Raising the Bar) Act 2012
Subject: Patents--reform--Australia
SNIPER No.: 2013/01279
Author: Valenzi, Shane
Title: It's only a day away: rethinking copyright termination in a new era
Source: IDEA: the Intellectual Property Law Review. Vol. 53 No. 2, 2013, pp. 225-255.
Summary: Statutory copyright termination -- 'new works termination' provision of the
United States Copyright Act effective as of January 1, 2013 -- has been part of the Act
since 1976 but will only now begin to have any practical effect -- authors who signed
over their creative rights may be able to terminate those prior grants of rights and
reclaim their original rights -- likely legal challenges to the statute -- possible strategies
for avoiding effects of the law -- examination of related case law and the language of the
statute -- proposed new method of analysis -- conceptualizing copyright termination as a
conditional, exclusive right.
Subject: Copyright assignment--United States
Subject: Copyright--law and legislation--United States
SNIPER No.: 2013/01762
Author: Adamo, Kenneth R.
Title: Joined-up thinking
Source: Intellectual Property Magazine. July-August 2013, pp. 80-83.
Summary: American Invents Act (AIA) -- new joinder provision -- problem that the
statute was supposed to cure -- F.R. Civ. P. 20 and Pre-AIA law -- what did s. 299 do? - how did the non-practicing entities (NPEs) respond? -- what effect has AIA 35 USC s.
299 had to date? -- what about use of Multidistrict Litigation (MDL) procedures under 28
USC s. 1407? -- USITC does not have 35 USC s. 299 issues -- Creative Eastern District
of Texas post-AIA solutions continue.
Subject: Patents--reform--United States
Subject: Patents--law and legislation--United States
SNIPER No.: 2013/01296
Author: Künzel, Jens
Title: Judicial venues for unfair competition cases
Source: World Intellectual Property Review. March-April 2013, p. 53.
Summary: Law on unfair competition -- a party seeking relief against another one for
alleged unfair competition may choose the judicial venue -- court located in the district in
which the defendant has his place of business -- court located in the district in which the
allegedly unlawful act has been committed -- if an advertisement with nationwide effect
contains the incriminating act, the plaintiff can choose any court in Germany because
the act is deemed to have been committed in the whole nation -- practitioner will then
choose a court with established credentials in unfair competition matters -- some courts
have developed into "national centres" for unfair competition cases -- system may now
be changed -- German federal administration has published a draft act against
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"disreputable business practices" -- includes a new provision on the court venue in
unfair competition cases -- usual venue would be the court located in the district where
the defendant has its place of business -- aim is to cap costs for small businesses -federal administration has overreached -- reasons.
Subject: Competition law--Germany
Subject: Forum shopping--Germany
SNIPER No.: 2013/01970
Author: Shillito, Mark
Title: Jurisdiction issues in EU cross-border online copyright infringement cases
Source: World Intellectual Property Report. Vol. 27 No. 8, August 2013, pp. 42-43.
Summary: Request from French Supreme for ruling from the Court of Justice for the
European Union (CJEU) -- determine whether the courts of each member state from
which the contents of a website were accessible, had jurisdiction to rule on alleged
copyright infringement claims under Article 5(3), Brussels I Regulation -- Opinion of
Advocate General Niilo J*áäskinen in Pinskey v. Mediatech -- dismissed 'accessibility"
criterion in favour of "focus and target" approach adopted by CJEU in trade mark and
database rights infringement cases -- facts of the case -- key findings of the decision -admissibility of questions referred -- Article 5(3) -- reproduction rights -- distribution and
communication rights -- place giving rise to the damage -- place where the damage
occurred
Subject: Copyright infringement--Europe
Subject: Electronic copyright--Europe
Subject: Legal jurisdiction--Europe
SNIPER No.: 2013/01428
Author: Miller, Charles E.
Title: Kappos vs. Hayatt and the endangered right of de novo judicial review of
administrative-agency decisions in the wake of the America Invents Act
Source: Journal of the Patent and Trademark Office Society. Vol. 95 No. 1, 2013, pp. 323.
General Note: First article in a series of two.
Summary: Judicial review of U.S. Patent and Trademark Office decisions in patent
cases -- analyses the rules governing the admissibility and treatment of new evidence in
U.S. district court civil actions against the director of the PTO seeking plenary review of
the agency's decisions affirming examiners' rejections of patent applications -- statutes,
standards of judicial review and rules -- Supreme Court's holdings on the questions
presented -- background facts and proceedings -- why Hayatt is important to the wellbeing of the U.S. patent system
Subject: United States. Leahy-Smith America Invents Act
Subject: Legal procedure--United States
Subject: Patent litigation--United States
SNIPER No.: 2013/01760
Author: Turner, Sarah
Title: Keeping secrets
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Source: Intellectual Property Magazine. July-August 2013, pp. 74-75.
Summary: United Kingdom Supreme Court -- Vestergaard Frandsen and others v
Bestnet Europe Ltd and others -- Court held that one of Vestergaard's former
employees, was not liable for breach of confidence as she did not know that what she
was doing amounted to misuse of confidential information -- background to the appeal -Supreme Court's decision -- contractual liability -- common design -- analysis of the
Supreme Court's decision.
Subject: Trade secrets--case law--United Kingdom
SNIPER No.: 2013/01298
Author: Malhotra, Abhishek
Title: Key recent cases
Source: World Intellectual Property Review. March-April 2013, p. 55.
Summary: Interesting decisions in intellectual property law in India -- two that are likely
to have a big impact -- Bayer v Natco Pharma -- broadcaster NDTV v International
Cricket Council (ICC).
Subject: Intellectual property--case law--India
SNIPER No.: 2013/01928
Author: Almeida, Paul
Title: Knowledge sourcing by foreign multinationals: patent citation analysis of the U.S.
semiconductor industry
Source: Strategic Management Journal. Vol. 17 Special Issue, Winter 1996, pp. 155165.
Summary: Whether multinationals go abroad to acquire technological knowledge -whether they contribute knowledge locally -- learning and contribution patterns of
multinational firms in the U.S. semiconductor industry -- study through analysis of
citations to their patents and field interviews -- knowledge used in innovation by foreign
subsidiaries in U.S. regions is mainly local, at regional and country level -- foreign firms
use regional knowledge significantly more than similar domestic firms -- in European
and Korean firms, foreign investment is directed towards offsetting home country
technological weaknesses -- foreign firms contribute to local knowledge progress -significant proportion of citations to their patents are local
Subject: Patent applications--analysis--United States
Subject: Large scale enterprises
Subject: Technology transfer
SNIPER No.: 2013/01930
Author: Kneller, Robert
Title: Large companies' preemption of university inventions by joint research is
strangling Japanese entrepreneurship and contributing to the degradation of university
science
Source: Journal of Intellectual Property Association of Japan. Vol. 5 No. 2, October
2008, pp. 36-50.
Summary: Joint research collaborations -- advanced science and technology involving
large companies -- facilitating the development of university discoveries -- patent law
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and the system of university IP management has enabled large partner companies to
control (preempt) the majority of university discoveries that have commercial value -the result of policies that make preemption easy, encourage university research in
applied fields, and allow findings to be kept secret -- encouraging more applied research
that is likely to be preempted -- short-term benefits for large companies justify the
foregone opportunities for pioneering research -- undermining of entrepreneurship and
academic freedom -- recommendations to curb the worst excesses of preemption to
reward pioneering university research.
Subject: Technology transfer--research--Japan
Subject: Technology transfer--social aspects--Japan
Subject: Business collaboration--Japan
SNIPER No.: 2013/01672
Author: Borgenhäll, Håkan
Title: The latest on supplementary protection certificates in Europe
Source: Intellectual Asset Management. No. 60, July/August 2013, pp. 125-128.
General Note: IAM Supplement: IP in the Life Science Industries 2013.
Summary: Supplementary protection certificates (SPCs) -- Europe -- regulatory
background -- negative SPC terms -- prerequisites for products containing several
active substances -- scope of protection of a single-substance SPC in relation to
combination products -- second SPCs for second medical use.
Subject: Patent terms--pharmaceutical industry--Europe
Subject: Pharmaceuticals--case law--Europe
SNIPER No.: 2013/01728
Author: Zhang, Guangliang, 1970Title: Legal analysis of popular names of trademarks
Source: China Patents and Trademarks. Vol. 113 No. 2, April 2013, pp. 98-102.
Summary: Use of popular or simplified names for trade marks -- association with
formally registered marks -- China -- characteristics and protection for popular names of
trade marks -- whether suppliers of goods have an interest in popular names -- dispute
resolution.
Subject: Trade mark owners' rights--China
Subject: Commercial names--China
SNIPER No.: 2013/01963
Author: Fei, Lanfang
Title: Liability for an online marketplace provider's trademark infringement: practice and
latest developments of Chinese law
Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 44
No. 5, August 2013, pp. 569-584.
Summary: Online shopping marketplaces in China selling forged or counterfeit
products -- Taobao one of the biggest online marketplaces -- involved in series of cases
-- intellectual property rights owners required Taobao to accept joint liability with the
sellers for counterfeiting -- review of Chinese cases concerning liability of online
marketplaces -- recent court decision against Taobao in the E-land case -- online
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marketplaces will bear more responsibility for combating online counterfeits -- Chinese
position lies between US approach and EU approach -- will help fight counterfeiting -benefit development of e-commerce in China
Subject: Counterfeiting--case law--China
Subject: Trade mark infringement--China
Subject: Electronic commerce--China
SNIPER No.: 2013/01648
Author: Monotti, Ann Louise
Title: Liability for joint infringement of a method patent under Australian law
Source: European Intellectual Property Review. Vol. 35 No. 6, 2013, pp. 318-326.
Summary: Extent to which Australian patent law might provide a remedy for a patentee
in regards to method claims -- joint infringement under US law -- joint liability under
Australian law -- common law of accessorial liability -- contributory infringement under
section 117 -- authorisation -- concluding comments -- en banc decision of US Court of
Appeals for the Federal Circuit in Akamai Technologies, Inc v Limelight Networks, Inc -recognised patentee might have rights under 35 USC s271(b) for active inducement of
infringement in such circumstances.
Subject: Patent infringement--liability--Australia
SNIPER No.: 2013/01725
Author: He, Yuan
Title: Liability on manufacturers and distributors in trademark right infringement litigation
Source: China Patents and Trademarks. Vol. 113 No. 2, April 2013, pp. 76-80.
Summary: Trade mark infringement by manufacturers and distributors -- Chinese case
law -- Electrolux -- MIFFY -- relationship between manufacturing and marketing of
infringing products -- joint and several liability -- judicial approaches to manufacturer and
distributor liability.
Subject: Trade mark infringement--manufacturing and processing industry--China
Subject: Manufacturing and processing industry--case law--China
SNIPER No.: 2013/01653
Author: Niemann, Fabian
Title: Limits of sampling sound recordings: The German Federal Court of Justice's
Metall auf Metall I and II holdings in light of the US jurisprudence on digital sampling
Source: European Intellectual Property Review. Vol. 35 No. 6, 2013, pp. 356-360.
Summary: German Federal Court of Justice (FCJ) held that the "smallest threads of
recorded sounds" are subject to the exclusive rights of record companies -- established
strict restrictions for the application of the free use exception under s.24 of the German
Copyright Act (GCA) -- restrictive approach impeded music producers from sampling
sounds -- may have an impact on the application of other "related rights" such as the
exclusive rights of movie producers and broadcasting companies -- approach taken by
the FCJ in many ways similar to that taken in recent decisions on digital sampling in the
United States -- legal background -- US case law: Bridgeport Music v Dimension Films - composition rights -- rights to phonograms -- German jurisdiction: Metall auf Metall -rights to the sound recording -- free use.
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Subject: Copyright infringement--culture and entertainment industry
Subject: Musical works
Subject: Fair use (Copyright)--Germany
Subject: fair use (Copyright)--United States
SNIPER No.: 2013/01086
Author: Lantos, Judit
Title: Lingerie and sunglasses: how do we wear them?
Source: World Intellectual Property Review. January-February 2013, p. 59.
Summary: Hungarian Intellectual Property Office (HIPO) held in an opposition
proceeding -- Chantelle luxury women's lingerie had a good reputation in the European
Union -- deserves broader trade mark protection -- Hungarian trade mark application
was filed for the designation 'Chantelle Eyewear' -- French lingerie company, Chantelle
Societe Anonyme, filed an opposition against the application -- opposition was based on
the confusing similarity of the marks -- opponent referred to the good reputation of its
earlier trademarks in the EU -- similarities between the marks were easily recognisable - HIPO established confusing similarity -- HIPO had to decide whether the products in
class 9, could be considered similar to the goods protected by the earlier Community
trademarks (CTMs) -- Chantelle's good reputation in the EU.
Subject: Trade mark opposition--case law--Hungary
Subject: Confusing similarity--case law--Hungary
SNIPER No.: 2013/01927
Author: Pumputiene, Rūta
Title: Lithuanian reforms put onus on trade mark owners
Source: Managing Intellectual Property. No. 231, July-August 2013, pp. 62-63.
Summary: Trade marks in the Baltic states are regulated in accordance with the
European Union Trade Marks Directive -- includes the requirement that owners must
genuinely use marks for the goods or services for which they are registered within five
years -- previously showing an intention to use the mark was sufficient -- large number
of marks that were not being used -- amendments stipulate a higher threshold for
showing use -- trade mark owners need to review their portfolios -- ensure marks are
used within the time limit.
Subject: Trade mark cancellation--law and legislation--Lithuania
Subject: Trade mark use--Lithuania
SNIPER No.: 2013/01657
Author: Stembridge, Bob
Title: Make innovation tax deductible
Source: Intellectual Asset Management. No. 60, July/August 2013, p. 7.
Summary: Patent Box regime -- tax savings for locally produced intellectual property if
specific steps are followed -- United Kingdom -- three-step patent portfolio alignment -five key steps for maximising benefits -- implementation of tax incentives.
Subject: Business taxation--United Kingdom
Subject: Patents--economics--United Kingdom
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SNIPER No.: 2013/01505
Author: Wilson, David
Title: Making the most of the new UK "patent box" tax regime
Source: European Intellectual Property Review. Vol. 35 No. 3, 2013, pp. 175-178.
Summary: Overview of the UK patent box regime -- benefits and opportunities offered
by the new regime -- IP rights that are eligible for the patent box -- who can qualify for
the patent box -- income derived from the exploitation of eligible IP rights falls within the
patent box -- company must either own the eligible IP right or be an exclusive licensee
of that right -- group structuring considerations -- merger and acquisition implications -implications for IP litigation.
Subject: Business taxation--United Kingdom
Subject: Patents--economics--United Kingdom
SNIPER No.: 2013/01942
Author: Shaw, Keo
Title: Malaria combination patent invalidated for obviousness
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 8, August 2013,
pp. 580-581.
Summary: Patent for a 5:2 ratio combination of two anti-malarial drugs held to be
obvious based on prior art which disclosed the two drugs in combination in other ratios - Glenmark Generics (Europe) Limited & others v The Wellcome Foundation Limited &
Glaxo Group Ltd -- atovaquone and proguanil -- revocation sought to allow for the
launch of generic versions of drug -- Malarone -- 'Windsurfing' test -- common general
knowledge relating to combinations -- decision not good for pharmaceutical combination
patent owners -- significance.
Subject: Inventive step--case law--United Kingdom
Subject: Patents--Pharmaceutical industry
SNIPER No.: 2013/01803
Author: Zhang, Anna
Title: A Malaysian transformation
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 3, March 2013, pp. 9-11.
Summary: Malaysia's patent and trade mark regulations amended to comply with the
accession to the Budapest Treaty and the Madrid Protocol in 2012 -- proposed
amendments to the Patents Act of Malaysia -- Industrial Designs Regulations
Amendments -- IP valuation -- patent challenges -- IP valuation system introduced to
allow small business to get funding by leveraging their intellectual assets -- lack of IP
specialist judges for the dedicated IP court.
Subject: Intellectual property systems--reform--Malaysia
SNIPER No.: 2012/01799
Author: Charlier, Christophe
Title: Mandatory regulation versus discretionary regulation, unilateralism, and national
treatment: analysis of the United States: Section 211 Omnibus Appropriations Act of
1998 dispute
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Source: Correa, Carlos M. (ed.),Research handbook on the interpretation and
enforcement of intellectual property under WTO rules. Cheltenham, U.K.: Edward Elgar,
2010. pp. 283-297.
Summary: United States Section 211 Appropriations Act dispute -- arbitrated by the
Dispute Settlement Body (DSB) of the World Trade Organization (WTO) -- raised by
Section 211 of the United States Omnibus Appropriations Act of 1998 -- regulation on
the control of Cuban assets -- opposed European Communities (EC) as complainant to
the United States (US) as defendant -- dispute raises many issues -- some specific to
the subject under scrutiny -- others are more general -- focus on the national treatment
claims -- disagreement between the Panel and the Appellate Board (AB) over national
treatment claims -- general lessons on national treatment drawn from the dispute.
Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994
April 15)
Subject: Trade marks--law and legislation
Subject: Intellectual property rights
SNIPER No.: 2013/01860
Author: Whitehead, Brian
Title: Manufacture or repair: the final word - Schütz v Werit
Source: European Intellectual Property Review. Vol. 35 No. 7, 2013, pp. 421-423.
Summary: UK Supreme Court overturned the Court of Appeal's judgment in Schütz v
Werit -- Supreme court agreed with the trial judge that Werit's actions did not infringe
Schütz's patent -- reached the conclusion for different reasons -- background facts -previous court decisions -- implications of failure to register the licence under s.68 -Court of Appeal had failed to recognise that the question of whether an activity
constitutes "making" a product falling within the scope of a patent, is a matter of fact and
degree -- whereas the trial judge's decision that the inventive concept of the patents
resided entirely in the cage was correct, that was only one of the factors that needed to
be taken into account.
Subject: Patent infringement--case law--United Kingdom
Subject: Spare parts--case law--United Kingdom
Subject: Intellectual property law--interpretation--United Kingdom
SNIPER No.: 2013/01926
Author: Rinkinen, Petri
Title: Market Court takes over civil IP matters in Finland
Source: Managing Intellectual Property. No. 231, July-August 2013, pp. 58-61.
Summary: Finnish Market Court becomes a specialised intellectual property (IP) court - will hear all civil infringement and validity actions -- appeals from Finland's IP office
and domain name cases -- reforms aim to improve judicial expertise -- improve
efficiency -- eight new legal judges and two technical judges have been appointed -normally three judges will hear each case -- reforms will simplify litigation in some cases
-- Court has extensive case-management powers -- likely to take a more judicial-style
approach to administrative proceedings -- changes will take some getting used to for
parties in litigation -- should make for cheaper and quicker justice.
Subject: Intellectual property--reform--Finland
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Subject: Intellectual property litigation--reform--Finland
SNIPER No.: 2013/01739
Author: Lainson, Daphne C.
Title: Maximising potential
Source: Intellectual Property Magazine. July-August 2013, pp. 30-32.
Summary: Expected increase in the global market for biosimilars -- biosimilars v
generic pharmaceuticals -- top filing countries for many pharmaceutical and biologic
patentees -- very different patenting landscapes for biologics -- patent linkage -- patent
linkage overview -- Canada and the United States -- listing on the patent register -eligible patents -- licensed patents -- patents to be addressed -- other litigation -- other
factors in the patent landscape -- patenting strategies.
Subject: Pharmaceuticals
Subject: Biotechnology
SNIPER No.: 2013/01793
Author: Squicciarini, Mariagrazia
Added author: Organisation for Economic Co-operation and Development. Directorate
for Science, Technology and Industry
Title: Measuring patent quality: indicators of technological and economic value
Source: OECD Science, Technology and Industry Working Papers. 2013/03, 6 June
2013.
Summary: Measuring patent quality -- potential quality indicators -- patent scope -patent family size -- grant lag -- backward citations -- citations to non-patent literature
(NPL) -- claims -- forward citations -- breakthrough inventions -- generality index -originality index -- radicalness index -- patent renewal -- composite patent quality index - data dissemination -- technology fields.
Subject: Value of intellectual property--research
Subject: Quality management--research
Subject: Patents--research
SNIPER No.: 2013/01745
Author: Carter, Stephen
Title: Medical miracle
Source: Intellectual Property Magazine. July-August 2013, pp. 39-40.
Summary: Development and sale of medical devices is booming worldwide -- medical
devices operate within two critical frameworks -- defined by their intellectual property
(IP) assets -- defined by the regulatory framework around the manufacture and sale of
the devices -- general insights into common IP issues during the standard lifecycle of a
small company making and supplying medical devices -- regulatory framework.
Subject: Biotechnology industry
Subject: Intellectual property management
SNIPER No.: 2013/01649
Author: Liu, Deming
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Title: Meltwater melts not water but principle!: the danger of the court adjudicating an
issue outwith the ambit of referral
Source: European Intellectual Property Review. Vol. 35 No. 6, 2013, pp. 327-333.
Summary: Disputes the findings of the Court of Appeal (CA) in Meltwater -- suggests
CA misunderstood early English cases which did not examine whether a title could
stand alone as a copyright work -- CA misapplied the ruling of the European Court of
Justice in Infopage -- did not concern the copyrightability of title either -- if the findings of
the CA were to be widely followed the societal needs for referencing and creation would
suffer -- CA's reliance on early cases does not bear out its decision -- Meltwater's
adverse effect on society -- CA should reconsider its position in relation to the
copyrightability of a newspaper headline by recognising the fundamental principle
underlying copyright of benefiting the public.
Subject: Copyright infringement--case law--United Kingdom
Subject: Fair use (Copyright)--case law--United Kingdom
SNIPER No.: 2013/01856
Author: Adrian, Angela
Title: Mickey Mouse wants to live forever: Guernsey's image rights ordinance will make
that possible
Source: European Intellectual Property Review. Vol. 35 No. 7, 2013, pp. 397-401.
Summary: Image Rights (Bailiwick of Guernsey) Ordinance establishes a new form of
intellectual property, previously unrecognised in a registrable form -- "registered
personality" and "images" which are associated with or registered against that
registered personality -- the core right is the registered personality -- who can register -why an image may not be registered -- absolute grounds -- relative grounds -- infringing
the image right -- unauthorised use -- defences -- ownership of cultural icons.
Subject: Personality rights--law and legislation--Guernsey
Subject: Famous trade marks--Guernsey
SNIPER No.: 2013/01743
Author: Morgan, Gareth
Title: Missed opportunity
Source: Intellectual Property Magazine. July-August 2013, pp. 36-37.
Summary: English Court of Appeal decision in Novartis v Hospira -- background to the
case -- interim injunctions granted at the discretion of the court -- under criteria set out
by the House of Lords case of American Cyanamid v Ethicon -- American Cynamid
criteria -- American Cyanamid rules should be modified for the pharmaceutical industry
sector -- will American Cyanamid rules be relevant in the Unified Patents Court (UPC).
Subject: Injunctions
Subject: Patent litigation--biotechnology industry--United Kingdom
SNIPER No.: 2013/01290
Author: Singh, Shivendra
Title: Murky waters: software innovations and business methods in India
Source: World Intellectual Property Review. March-April 2013,
pp. 44-46.
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Summary: Grant of software patents is a debatable subject matter under the Indian
patent regime -- The Indian Patent Act 1970 -- possibility or probability of obtaining
patent protection for software innovations in India -- business methods are nonpatentable -- pre-grant opposition involving Yahoo Inc. and Rediff.com -- IP Appellate
Board (IPAB) held that business method patents are not an appropriate subject matter
in India.
Subject: Computer-related inventions--patentability--India
Subject: Business methods--patentability--India
SNIPER No.: 2013/01679
Author: Minderop, Ralph
Title: The must-know facts about patent term extensions in Europe
Source: Intellectual Asset Management. Patents in Europe 2013/2014, 2013, pp. 3136.
Summary: Patent term extension -- Europe -- what a supplementary protection
certificate (SPC) is -- significance of SPC's compared to regular patent filings -European countries in which SPCs can be obtained -- SPC duration -- deadline for filing
SPC applications -- eligible subject matter for SPC protection -- conditions for obtaining
an SPC -- determining whether a product is SPC eligible -- whether an SPC can be
obtained for a single product based on marketing authorisation for a combination
product -- scope of protection of an SPC -- single and multiple SPCs -- filing SPCs for
combination products -- forfeit or loss of SPCs -- requirements for prosecuting SPC
applications.
Subject: Patent extension--Europe
Subject: Patent terms--Europe
SNIPER No.: 2013/01278
Author: Lesser, William
Title: Myriad & Prometheus, laws & products of nature: are the courts considering an
economic non-statutory subject matter exclusion?
Source: IDEA: the Intellectual Property Law Review. Vol. 53 No. 2, 2013, pp. 173-223.
Summary: US court decisions on patentability for new diagnostic and therapeutic
procedures -- judicially-created exclusions to patent eligible subject matter -- "products
of nature" and "laws of nature" exclusions and other non-statutory bars to patentable
subject matter under 35 U.S.C. s101 -- review of the Myriad and Prometheus cases
histories -- assessment of the legal, economic and scientific evidence for the existence
of blocking gene patents -- no empirical basis for an additional non-statutory patentable
subject matter bar -- potential exists for blocking patents -- should be addressed on an
as needed basis.
Subject: Patentability--United States
Subject: Patenting of life forms--case law--United States
SNIPER No.: 2013/01959
Author: Matthews, Duncan, 1965Title: Negotiating the IP Chapter of an EU-US Transatlantic
Trade and Investment Partnership: let's not repeat past mistakes
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Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 44
No. 5, August 2013, pp. 491-493.
Summary: Transatlantic Trade and Investment Partnership (TTIP) -- ambitious trade
and investment agreement between the United States and the European Union to
promote international competitiveness, jobs and growth -- IP Chapter of the TTIP -- EUUS High Level Working Group on Jobs and Growth -- little information about what IP
issues are really likely to be negotiated in the TTIP -- concerns about secrecy and lack
of transparency during the negotiations -- similarities to unsuccessful attempt to
negotiate the Anti-Counterfeiting Trade Agreement (ACTA) -- concerns about secrecy of
the draft IP Chapter of Trans-Pacific Partnership (TPP) -- excessive secrecy increases
prospect of misinterpretation and alarmist concerns -- negotiators should learn lessons
from ACTA's failure -- openness and transparency should be key strategy
Subject: Free trade--treaties--United States
Subject: Free trade--treaties--Europe
SNIPER No.: 2013/01302
Author: Delion, Alain C.
Title: New avenues for trade mark protection
Source: World Intellectual Property Review. March-April 2013, p. 60.
Summary: Peruvian law provides two ways to obtain protection against the misuse of
registered trade marks -- administrative channel through infringement actions filed
before Peru's patent and trade mark office (INDECOPI) -- judicial channel through the
laws against the infringement of industrial property rights contained in the Penal Code -administrative channel is the most used -- speed of procedures and the possibility of
finding an agreement -- no fraud is needed to constitute an infringement -- in the judicial
channel, fraud of some sort is required in order to establish the responsibility of the
author -- infringer's intention to break the law must be proved when it comes to the
unauthorised use of a trade mark owned by a third party.
Subject: Trade mark infringement--law and legislation--Peru
Subject: Trade mark owners' rights--Peru
SNIPER No.: 2013/01304
Author: Burbea, Iulia
Title: The new Civil Procedure Code
Source: World Intellectual Property Review. March-April 2013, p. 62.
Summary: Aim of the new Civil Procedure Code -- ensure access for appropriates
parties to simpler procedural means and forms -- accelerate the case settlement
procedure, including the compulsory enforcement stage -- changes sought to
reconfigure the material competence of the courts -- ensuring an equitable distribution
of cases -- would make judicial procedures more fluid and quick -- make the summoning
and service procedure more effective -- would implement procedural mechanisms and
instruments aimed at contributing to the settlement of civil cases in a reasonable term -changes to the new code involve improvements in the settlement of disputes in
intellectual property (IP) matters.
Subject: Law--reform--Romania
Subject: Dispute resolution--Romania
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SNIPER No.: 2013/01668
Author: Myers, Louis
Title: New decisions on diagnostic claims in the wake of Mayo v. Prometheus
Source: Intellectual Asset Management. No. 60, July/August 2013, pp. 110-112.
General Note: IAM Supplement: IP in the Life Science Industries 2013.
Summary: Patentability of diagnostic methods -- Mayo Collaborative Services v.
Prometheus Laboratories Inc. -- United States -- diagnostic methods now require
additional inventive step -- laws of nature not eligible for patent protection -- Prometheus
diagnostic claims -- post-Prometheus analytical framework -- implications of the
decision.
Subject: Medical procedures--patentability--United States
Subject: Patentability--case law--United States
Subject: Inventive step--case law--United States
SNIPER No.: 2013/01088
Author: Chew, Kherk Ying
Title: New focus on IP valuation in 2013
Source: World Intellectual Property Review. January-February 2013, p. 61.
Summary: Malaysian government announced that an intellectual property (IP) financing
fund scheme will be set up -- will offer project-based loans -- government also allocated
funds for training programmes for local IP valuers -- run by the Intellectual Property
Corporation of Malaysia (IPCM) -- in collaboration with Malaysia Debt Ventures Berhad
(MDV) and Multimedia Development Corporation (MDeC) -- local banks are undergoing
training for IP valuation and will start accepting such assets as collateral -- MDeC
announced it will be launching an IP valuation model that will serve as a guide on
methods used in IP valuation -- government also intends to establish an IP rights market
platform.
Subject: Value of intellectual property--Malaysia
Subject: Financial services industry--Malaysia
SNIPER No.: 2013/01771
Author: Westkamp, Guido
Title: The new German publisher's right - a violation of European law?: a comment
Source: Queen Mary Journal of Intellectual Property. Vol. 3 No. 3, September 2013, pp.
241-250.
Summary: Germany introduces a new neighbouring right -- grants news publishers the
right to authorise or prohibit the use of news items by search engines -- views that this
new right violates European law in affording protection against the use of information
that goes above and beyond the freedom provided under the Database Directive -suggests the courts must refuse to apply it -- scope of the publisher's right -- obligations
following from the Database Directive -- background to Database Protection -protection ceilings under Article 7(5) of the Database Directive -- legitimate interests and
normal exploitation -- ancillary copyrights.
Subject: Copyright infringement--culture and entertainment industry--Germany
Subject: Neighbouring rights--Germany
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Subject: Copyright--law and legislation--Germany
SNIPER No.: 2013/01079
Author: Atacador, Joy
Title: New look enforcement mechanisms unveiled
Source: World Intellectual Property Review. January-February 2013, p. 52.
Summary: Significant reforms to Australia's trade mark and copyright enforcement
mechanisms under the Intellectual Property Laws (Amendment) Raising the Bar Act
2012 -- Australia's Notice of Objection Scheme provisions -- impact of the changes -additional damages -- increase in the maximum penalty for trade mark counterfeiting
offences -- trade mark owners will be able to have their matters heard in the Federal
Magistrates Court -- Lonsdale v Paul's Warehouse -- Full Court of the Federal Court of
Australia affirmed that it is possible to stop the sale of parallel imported goods in
Australia.
Subject: Intellectual property enforcement--Australia
Subject: Customs--procedure--Australia
Subject: Parallel importing--Australia
SNIPER No.: 2013/01986
Author: Russo, Davide
Title: A new patent-based approach for technology mapping
Source: Pharmaceutical Patent Analyst. Vol. 2 No. 5, September 2013, pp. 611-627.
Summary: Knowledge Organizing Module (KOM) -- methodology using patent literature
to identify all the existing technologies to achieve a specific goal -- using KOM
methodology possible to classify a huge pool of patents without browsing a long list -importance of a structured method -- limitations in the use of patent classes -- limitations
in the use of cited-citing patents -- limitations in the use of keywords -- text processing -relevance feedback -- automatic query expansion -- traditional patent search -- pool
construction -- knowledge organising module patent search -- case study.
Subject: Patents--analysis
Subject: Patent searching
SNIPER No.: 2013/01476
Author: Menary, Karli
Title: New Zealand copyright law and transformative works
Source: Intellectual Property Forum. No. 93, June 2013, pp. 29-47.
Summary: Creation and dissemination of transformative works -- defined as a work
incorporating copyright material for the purpose of comment, parody or criticism -possibility original creators consider their moral rights have been infringed -- examples
of transformative works -- transformative works and the New Zealand Copyright Act
1994 -- economic rights -- moral rights -- performer's rights -- whether New Zealand's
treatment of transformative works is acceptable -- whether New Zealand copyright law
disincentivises the creation of transformative works -- reform -- fair use
Subject: Copyright--law and legislation--New Zealand
Subject: Copyright infringement--New Zealand
Subject: Moral rights--New Zealand
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Subject: Fair use (Copyright)--New Zealand
SNIPER No.: 2013/00168
Author: Frankel, Susy
Title: A New Zealand perspective on the protection of mātauranga Māori (traditional
knowledge)
Source: Graber, Christoph B., et al. (eds.), International trade in indigenous cultural
heritage: legal and policy issues. Cheltenham, U.K.: Edward Elgar, 2012. pp. 439-459.
Summary: Māori people lodged a claim before the Waitangi Tribunal in 1991 -- reason
for bringing the claim was the view that successive New Zealand governments had
failed to allow Māori to exercise self-determination and control over things Māori -- claim
alleged that this failure had been a major cause of the loss of Māori culture -- claim was
wide in scope and complex in its depth -- claim resulted in a report from the Waitangi
Tribunal in 2011 -- all over the world, indigenous people seek greater control of their
culture -- importance of an effective interface between intellectual property and other
methods of protecting traditional knowledge and related cultural interests -- interface
can provide a way in which the two systems can work together and create a framework
to resolve conflict.
Subject: Traditional knowledge--New Zealand
Subject: Intellectual property law--New Zealand
SNIPER No.: 2013/01776
Author: Kur, Annette
Added author: Max-Planck-Institut für Immaterialgüter- und Wettbewerbsrecht
Title: Not prior in time, but superior in right: how trademark registrations can be affected
by third party interests in a sign
Source: Max Planck Institute for Intellectual Property and Competition Law Research
Paper. No. 13-10, 24 May 2013.
Summary: Unregistered trade mark -- first-to-file priority and superior prior interest -international obligations of the European Union and member states -- competence -registration of well-known marks -- European case law and legislation -- need for legal
reform -- well-known marks and marks having a reputation -- protection against
infringing use -- European Commission proposals -- filing in bad faith.
Subject: Trade mark priority--Europe
Subject: Trade mark filing--Europe
Subject: Famous trade marks--Europe
SNIPER No.: 2013/01398
Author: Lantos, Michael
Title: Oiling the wheels: amendments to legal practice
Source: World Intellectual Property Review. Annual, 2013, pp. 62-65.
Summary: IP law reform in Hungary -- the right to modify own decisions made in
exparte proceedings -- novelty searches -- adapt the wording of the laws to actual legal
practice -- changes in international legislation -- law for patent attorneys has also been
amended -- result in faster, reliable, timelier and more predictable IP proceedings.
Subject: Intellectual property law--reform--Hungary
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Subject: Legal procedure--reform--Hungary
SNIPER No.: 2013/01720
Author: Wu, Chengjian
Title: On injunctive relief for standard-essential patents
Source: China Patents and Trademarks. Vol. 113 No. 2, April 2013, pp. 27-33.
Summary: Injunctions on patents needed for implementation of technology standards -China -- judicial practice regarding injunctions -- treatment of injunctive relief -- no
injunctions granted -- licence negotiation under court supervision -- licence negotiation
before injunction takes effect -- patentee does not waive rights in standard-essential
patents.
Subject: Standards (Technical)--China
Subject: Patent licensing--China
Subject: Injunctions--China
SNIPER No.: 2013/01727
Author: Zhang, Rongyan
Title: On "means plus function"
Source: China Patents and Trademarks. Vol. 113 No. 2, April 2013, pp. 90-92.
Summary: Patent examination procedure -- China -- use of means plus function -construction of means plus function -- character of means plus function.
Subject: Patent examination--procedure--China
SNIPER No.: 2013/01964
Author: Chiou, Theodoros
Title: On royalties and transfers without (monetary) consideration: looking for the
"magic formula" for assessing the validity of remuneration clauses of copyright transfers
under French copyright law
Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 44
No. 5, August 2013, pp. 585-598.
Summary: Remuneration clauses are probably the most important part of a copyright
transfer -- in France, copyright contract law provides for a specific legal framework for
remuneration clauses of copyright transfers -- importance of the principle of proportional
(monetary) remuneration of the author -- many problems occur -- French copyright
contract law unclear on the validity of copyright transfers without (monetary)
consideration -- analysis of that problem -- French Supreme Court (Cour de cassation)
decision -- shows the problematic character of the assessment of the validity of the
remuneration clause made by the Court in that case -- explains why this problematic
assessment is linked to the unclear character of the actual French legal framework for
copyright transfers without (monetary) remuneration -- offers some suggestions in order
to find the 'magic formula' for assessing the validity of copyright transfers without
(monetary) consideration under the current legal framework -- recommends the reform
of the relevant legal texts -- make the regime of copyright transfers without (monetary)
consideration more explicit
Subject: Copyright assignment--France
Subject: Copyright licensing--France
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SNIPER No.: 2013/01097
Author: Sutton, Paul J., 1939Title: On the slate: patent decisions in 2013
Source: World Intellectual Property Review. January-February 2013, p. 70.
Review: Computer related inventions -- patentability of business methods -- Bilski
decision -- first sale doctrine -- Apple's preliminary injunction against Samsung was
reversed by the Federal Circuit -- United States Supreme Court will decide whether
federal or state courts have exclusive jurisdiction over patent malpractice claims.
Subject: Patents--case law--United States
Subject: Patentability--case law--United States
SNIPER No.: 2013/01871
Title: A one man band
Source: World Intellectual Property Review. May-June 2013, pp. 20-23.
Summary: Jeff Duke, general counsel at Zippo -- attractive products for counterfeiters - lighters decorated without authorisation -- poor quality -- problems of offline and online
counterfeiting have merged into one -- how counterfeit websites operate -- Zippo
spends a large amount of money on anti-counterfeiting measures -- online monitoring of
counterfeit products -- private investigators -- China -- concern about cybersquatting -issues under the new generic top-level domain (gTLD) programme -- defensive
measures -- rights protection mechanisms (RPMs).
Subject: Brand management
Subject: Intellectual property enforcement
SNIPER No.: 2013/01295
Author: Marie, Aurélia
Title: Online sale of drugs now possible
Source: World Intellectual Property Review. March-April 2013, p. 52.
Summary: France has implemented EU Directive 2011/62/UE June 8, 2011 relating to
medicinal products for human use -- owners of a pharmacy can make retail sales online
of certain medicinal drugs -- electronic commerce in medicines is strictly regulated -creation of a website for selling drugs is conditional on the physical existence of a
pharmacy -- pharmacist must obtain permission from the Regional Health Agency -inform the Order of Pharmacists of his intent to sell online -- certain minimum
information on each page of the website -- breaches of rules may result in sanctions -new French provisions are consistent with the Directive.
Subject: Electronic commerce--pharmaceutical industry--France
Subject: Pharmaceuticals--law and legislation--France
SNIPER No.: 2013/01341
Author: Seisdedos, Joe
Title: Open innovation and the changing role of IP counsel
Source: Australian Intellectual Property Law Bulletin. Vol. 25 No. 10, June 2013, pp.
202-204.
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Summary: Open innovation in a nutshell -- main open innovation models -- product
platforming -- idea competitions -- customer immersion -- collaborative product design
and development -- whether intellectual property (IP) rights are at odds with open
innovation -- what are the problems for IP counsel? -- tackling the issues.
Subject: Innovation (Technological)
Subject: Business collaboration
SNIPER No.: 2013/01768
Author: Hill, W. Wesley
Title: Opening Pandora's patent box: global intellectual property tax incentives and their
implications for the United States
Source: IDEA: the Intellectual Property Law Review. Vol. 53 No. 3, 2013, pp. 371-408.
Summary: Rewards for innovation -- comparison of IP-targeted tax incentives of
several nations -- North American model rewards front-end innovation activity -research and experimental expenditures -- credit for increasing research activities -European model rewards back-end innovation activity -- United Kingdoms' patent box
regime -- implications of international IP incentives for the United States -- proposal
from the Information Technology and Innovation Foundation (ITIF) for a United States
patent box regime -- arguments against adopting the regime in the US -- suggestions for
the future of the US patent box
Subject: Business taxation--United States
Subject: Patents--economics--United States
Subject: Innovation (Technological)
SNIPER No.: 2013/01788
Author: Spires, Rod
Added author: UK Intellectual Property Office
Title: Orphan works in the UK and overseas
Source: Orphan Works in the UK and Overseas. July 2013.
Summary: Research on the proposed introduction of an orphan works system in the
UK -- arose out of recommendations from the Hargreaves Review -- which pointed to
orphan works as a major problem of untapped resources -- results in large quantities of
copyright works being effectively unavailable for use -- whether for cultural or
commercial purposes -- suggests UK legislation to enable licensing of orphan works -foreign organisations in countries with a licensing system.
Subject: Copyright owners' rights--United Kingdom
Subject: Copyright--reform--United Kingdom
Subject: Copyright ownership--law and legislation--United Kingdom
SNIPER No.: 2013/01879
Author: Kenney, Robert J.
Title: Out of reach: covenant not to sue moots subject matter jurisdiction
Source: World Intellectual Property Review. May-June 2013, pp. 50-53.
Summary: Nike sued Already, doing business as Yums -- US District Court for the
Southern District of New York -- trade mark infringement, false designation of origin,
unfair competition and trademark dilution -- Yums filed a counterclaim for declaratory
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judgment seeking to cancel Nike's registration -- Nike delivered a 'covenant not to sue'
to Yums -- subject matter jurisdiction -- the factual record.
Subject: Trade mark infringement--case law--United States
Subject: Intellectual property enforcement--United States
SNIPER No.: 2013/00166
Author: Bell, Catherine E. (Catherine Edith), 1961Title: Ownership and trade of aboriginal cultural heritage in Canada
Source: Graber, Christoph B., et al. (eds.), International trade in indigenous cultural
heritage: legal and policy issues. Cheltenham, U.K.: Edward Elgar, 2012. pp. 362-395.
Summary: Ownership and trade of indigenous cultural heritage in Canada is shaped by
many legal influences -- regulated in national law through federal, territorial and
provincial property legislation -- much of the legislation was enacted before recognition
and protection of 'existing aboriginal and treaty rights of the aboriginal peoples of
Canada' in s. 35 of the Constitution Act 1982 -- Canadian law and policy affecting
aboriginal ownership and control of cultural heritage in Canada -- extent Canadian law
recognises the right of aboriginal peoples 'to freely determine their ... cultural
development' and exercise 'autonomy or self-government' in matters relating to cultural
heritage -- how various approaches to defining aboriginal peoples, self-government and
forms of indigenous cultural heritage affect rights recognition -- the degree of control
aboriginal peoples may enjoy -- the forms responses to their concerns may take.
Subject: Traditional cultural expressions--Canada
Subject: Trade--Canada
Subject: Intellectual property ownership--Canada
SNIPER No.: 2013/01983
Author: Stothers, Christopher
Title: Parallel imports in the large EU: the specific mechanism
Source: Pharmaceutical Patent Analyst. Vol. 2 No. 5, September 2013, pp. 577-579.
Summary: Implications of Merck v Sigma -- English Court of Appeal referred to the
European Court of Justice (ECJ) -- questions on the applications of the specific
mechanism -- permits pharmaceutical patents and Supplementary Protection
Certificates (SPC) to be enforced against parallel imports from 11 of the new EU
member states -- transitional rights to enforce their patents against imports from new
Member States -- very little litigation under the specific mechanism -- pending the
judgment of the ECJ, an increased risk that parallel importers will attempt to exploit any
failure to object by commencing imports -- aiming to make short-term profits and hoping
that they will be able to retain them if the ECJ rules in their favour.
Subject: Parallel importing--pharmaceutical industry--Europe
Subject: Patent extension--Europe
SNIPER No.: 2013/01790
Author: Mitra-Khan, Benjamin H.
Added author: UK Intellectual Property Office
Added author: United States. Patent and Trademark Office
Title: Patent backlogs, inventories and pendency: an international framework
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Source: Patent Backlogs, Inventories and Pendency. June 2013.
General Note: "Working draft June 26, 2013" -- Cover.
General Note: A joint UK Intellectual Property Office and US Patent and Trademark
Office report.
Summary: Joint report on the economic and operative impacts of patent application
backlogs -- new and comparative methodology for measuring backlogs and pendency -empirical findings on the relationship between applications stocks and examination
pendency in the United Kingdom and the United States.
Subject: UK Intellectual Property Office
Subject: United States. Patent and Trademark Office
Subject: Patent applications
Subject: Patent processing
Subject: Patent systems
Subject: Industrial research and development
SNIPER No.: 2013/01979
Author: Atkinson, Robert D.
Title: Patent boxes: innovation in tax policy and tax policy innovation
Source: Patent Boxes: Innovation in Tax Policy and Tax Policy for Innovation. October
2011.
General Note: The Information Technology & Innovation Foundation
Summary: Recent emergence of patent boxes -- economic theory underlying patent
boxes -- market failures -- summary of global paten box regimes -- globally competitive
corporate tax codes -- effectiveness of patent boxes -- whether patent boxes would be
more effective if they were redesigned -- frequently asked questions about patent boxes
-- should the United States adopt a patent box.
Subject: Business taxation--United States
Subject: Patents--economics--United States
SNIPER No.: 2013/00229
Author: Xue, Jilin
Title: Patent filing strategies for R&D resulted from China and the United States
Source: China Patents and Trademarks. Vol. 111 No. 4, October 2012, pp. 15-18.
Summary: Strategy and analysis of filing patent applications for inventions developed in
China and the U.S. -- meeting both countries patent law requirements in the shortest
time -- savings expenses in the form of translation fees -- delaying the start of patent
term in China -- properly shift the 20 year patent term to optimise protection in the U.S. - application in other countries with similar provisions also possible.
Subject: Patent filing--China
Subject: Patent filing--China
SNIPER No.: 2013/01663
Author: Ewing, Thomas L.
Title: Patent privateering reloaded
Source: Intellectual Asset Management. No. 60, July/August 2013, pp. 49-58.
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Summary: Intellectual property privateering -- assertion of rights by non-practising
entitles (NPEs) and sponsors against specific target companies -- competitive
background -- varieties of IP privateering -- legal liability -- analogy to maritime
privateering -- how privateering works -- privateer objectives -- privateer techniques -responses by targets -- debates over usefulness of privateering -- effects of privateering
on IP landscape.
Subject: Patent trolls
Subject: Patent litigation
Subject: Patent infringement
SNIPER No.: 2013/01660
Author: Berman, Bruce M.
Title: Patent system's bad actors are not confined to trolls
Source: Intellectual Asset Management. No. 60, July/August 2013, p. 24.
Summary: Bad faith patent litigation not confined to non-practising entities (NPEs) -United States -- Lex Machina report found recent increases in patent suits attributable to
NPEs -- PwC report found damages obtained by NPEs higher than those obtained by
operating companies -- reports lack context -- different types of NPEs, most making
some contribution to innovation -- failure in IP licensing practices and patent portfolio
management.
Subject: Patent litigation--trends--United States
Subject: Patent trolls--United States
SNIPER No.: 2013/01802
Author: Chen, Candy K. Y.
Title: Patent term extension explained
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 4, April 2013, p. 44.
Summary: Taiwan's new Patent Act -- amendments to regulations governing patent
term extension -- patents eligible for patent term extension -- why may apply -- timing -government permit vs. patent term extension -- calculation of the extension period.
Subject: Taiwan. Zhuānlìfǎ
Subject: Patent systems--law and legislation--Taiwan
Subject: Intellectual property law--reform--Taiwan
Subject: Patent extension--Taiwan
SNIPER No.: 2013/01095
Author: Chen, Crystal J.
Title: Patent term extension explained
Source: World Intellectual Property Review. January-February 2013, p. 68.
Review: New Patent Act -- amendments to regulations governing patent term
extension -- patents eligible for patent term extension -- application for patent term
extension must be filed by a patentee -- timing -- government permit v patent term
extension -- calculation of the extension period.
Subject: Patent extension--Taiwan
Subject: Patents--reform--Taiwan
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SNIPER No.: 2013/01346
Author: Mirzai, Nicholas
Title: The patentability of isolated gene sequences in Australia
Source: Australian Intellectual Property Law Bulletin. Vol. 25 No. 10, June 2013, pp.
220-222.
Summary: Issue of whether isolated gene sequences are patentable subject matter is a
longstanding one -- necessary to preserve the commerciality of biotechnological
research to facilitate medical innovation -- social and ethical complications with
permitting commercial benefit to derive from that which occurs naturally -- policy makers
must consider the definition of a patent and whether gene research warrants
monopolistic protection -- whether researchers should be able to patent isolated gene
sequences in light of Cancer Voices Australia v Myriad Genetics Inc -- genes and the
Patents Act 1990 -- Cancer Voices Australia v Myriad Genetics Inc -- economic and
ethical policy considerations -- response and looking forward.
Subject: Genes--patentability--Australia
Subject: Patents--law and legislation--Australia
SNIPER No.: 2013/01656
Added author: IP Australia
Title: Patentable subject matter: consultation on an objects clause and an exclusion
from patentability
Source: Patentable Subject Matter: Consultation on an Objects Clause and an
Exclusion from Patentability. July 2013.
Summary: Consultation on a proposal to introduce amendments to the Patents Act
1990 (Cth) -- in November 2011, the Government issued its response to three reports
into gene patents and patentable subject matter -- Government accepted
recommendations to amend the Patents Act 1990 -- to introduce an objects clause to
provide clarity in the interpretation of the Act -- patentability exclusion to prevent the
commercialisation of inventions that would be wholly offensive to the Australian public -consultation paper released to encourage discussion -- seek views on the proposed
amendments -- responses to the questions posed in the paper -- written submissions
due by 27 September 2013.
Subject: Patentability--reviews--Australia
Subject: Intellectual property systems--reform--Australia
SNIPER No.: 2013/01673
Author: Sheikh, Mita
Title: Patenting biotech inventions in India: prosecution and claim drafting tips
Source: Intellectual Asset Management. No. 60, July/August 2013, pp. 129-132.
General Note: IAM Supplement: IP in the Life Science Industries 2013.
Summary: Patentability and patent claims -- India -- frivolous inventions -- inventions
that are contrary to public morality -- discovery of living or non-living entities -- mere
discovery of new forms of known substances -- admixtures -- agricultural and
horticultural methods -- medical, surgical, curative, prophylactic, diagnostic and
therapeutic treatment methods -- plants, animals, seeds and essentially biological
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processes -- mathematical methods, algorithms and computer program -- inventions
based on traditional knowledge.
Subject: Patentability--India
Subject: Patent claims--India
Subject: Patent novelty--India
Subject: Biotechnology--patentability--India
SNIPER No.: 2013/01938
Author: Christie, Andrew, LL. M., Ph. D.
Added author: Intellectual Property Research Institute of Australia
Title: Patents associated with high-cost drugs in Australia
Source: PLOS ONE. Vol. 8 No. 4, 2013.
Summary: Concern about pharmaceutical companies extending monopolies by
"evergreening" blockbuster drugs through misusing patent system -- analysis of all
patents associated with 15 of the costliest drugs in Australia over the last 20 years -mean of 49 patents associated with each drug -- three-quarters of these patents are
owned by companies other than the drug's originator -- majority of patents owned by
companies that do not have a record of developing top-selling drugs -- findings show
multitude of players seek monopoly over innovations to blockbuster drugs -- attempts to
control drug costs by reducing misuse of patent system likely to fail if they focus only on
patenting activities of originators
Subject: Evergreening--Australia
Subject: Pharmaceuticals--Australia
SNIPER No.: 2013/01938
Author: Christie, Andrew, LL. M., Ph. D.
Added author: Intellectual Property Research Institute of Australia
Title: Patents associated with high-cost drugs in Australia
Source: PLOS ONE. Vol. 8 No. 4, 2013.
Summary: Concern about pharmaceutical companies extending monopolies by
"evergreening" blockbuster drugs through misusing patent system -- analysis of all
patents associated with 15 of the costliest drugs in Australia over the last 20 years -mean of 49 patents associated with each drug -- three-quarters of these patents are
owned by companies other than the drug's originator -- majority of patents owned by
companies that do not have a record of developing top-selling drugs -- findings show
multitude of players seek monopoly over innovations to blockbuster drugs -- attempts to
control drug costs by reducing misuse of patent system likely to fail if they focus only on
patenting activities of originators
Subject: Evergreening--Australia
Subject: Pharmaceuticals--Australia
SNIPER No.: 2013/01681
Author: Israiloff, Peter
Title: Patents in Europe: Austria
Source: Intellectual Asset Management. Patents in Europe 2013/2014, 2013, pp. 4348.
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Summary: Patents -- Austria -- enforcement of European patent rights -- court expertise
in patents -- validity and infringement actions -- witness cross-examination -- expert
witnesses -- pre-trial discovery -- doctrine of equivalents -- difficulty in enforcing
business methods, software and biotechnology patents -- whether previous precedent is
binding on courts -- restrictions on legal counsel -- consideration of judicial reasoning
from other jurisdictions -- delay of proceedings -- preliminary injunctions -- costs -infringement remedies -- calculation of damages -- permanent injunctions -- typical
length of proceedings -- right to appeal -- mediation and arbitration -- whether courts are
pro-patentee -- accession to London Agreement on Translations -- other enforcement
issues.
Subject: Patent enforcement--Austria
Subject: Patent infringement--Austria
Subject: Legal procedure--Austria
SNIPER No.: 2013/01682
Author: Pospíšil, Michal
Title: Patents in Europe: Czech Republic
Source: Intellectual Asset Management. Patents in Europe 2013/2014, 2013, pp. 4953.
Summary: Patents -- Czech Republic -- enforcement of European patent rights -- court
expertise in patents -- validity and infringement actions -- witness cross-examination -expert witnesses -- pre-trial discovery -- doctrine of equivalents -- difficulty in enforcing
business methods, software and biotechnology patents -- whether previous precedent is
binding on courts -- restrictions on legal counsel -- consideration of judicial reasoning
from other jurisdictions -- delay of proceedings -- preliminary injunctions -- costs -infringement remedies -- calculation of damages -- permanent injunctions -- typical
length of proceedings -- right to appeal -- mediation and arbitration -- whether courts are
pro-patentee -- accession to London Agreement on Translations -- other enforcement
issues.
Subject: Patent infringement--Czech Republic
Subject: Patent enforcement--Czech Republic
Subject: Legal procedure--Czech Republic
SNIPER No.: 2013/01683
Author: Elmeros, Claus
Title: Patents in Europe: Denmark
Source: Intellectual Asset Management. Patents in Europe 2013/2014, 2013, pp. 5458.
Summary: Patents -- Denmark -- enforcement of European patent rights -- court
expertise in patents -- validity and infringement actions -- witness cross-examination -expert witnesses -- pre-trial discovery -- doctrine of equivalents -- difficulty in enforcing
business methods, software and biotechnology patents -- whether previous precedent is
binding on courts -- restrictions on legal counsel -- consideration of judicial reasoning
from other jurisdictions -- delay of proceedings -- preliminary injunctions -- costs -infringement remedies -- calculation of damages -- permanent injunctions -- typical
length of proceedings -- right to appeal -- mediation and arbitration -- whether courts are
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pro-patentee -- accession to London Agreement on Translations -- other enforcement
issues.
Subject: Patents--Denmark
Subject: Patent systems--Denmark
SNIPER No.: 2013/01684
Author: Eskola, Petri
Title: Patents in Europe: Finland
Source: Intellectual Asset Management. Patents in Europe 2013/2014, 2013, pp. 5962.
Summary: Patents -- Finland -- enforcement of European patent rights -- court
expertise in patents -- validity and infringement actions -- witness cross-examination -expert witnesses -- pre-trial discovery -- doctrine of equivalents -- difficulty in enforcing
business methods, software and biotechnology patents -- whether previous precedent is
binding on courts -- restrictions on legal counsel -- consideration of judicial reasoning
from other jurisdictions -- delay of proceedings -- preliminary injunctions -- costs -infringement remedies -- calculation of damages -- permanent injunctions -- typical
length of proceedings -- right to appeal -- mediation and arbitration -- whether courts are
pro-patentee -- accession to London Agreement on Translations -- other enforcement
issues.
Subject: Patent infringement--Finland
Subject: Patent enforcement--Finland
Subject: Legal procedure--Finland
SNIPER No.: 2013/01685
Author: Casalonga, Caroline
Title: Patents in Europe: France
Source: Intellectual Asset Management. Patents in Europe 2013/2014, 2013, pp. 6366.
Summary: Patents -- France -- enforcement of European patent rights -- court expertise
in patents -- validity and infringement actions -- witness cross-examination -- expert
witnesses -- pre-trial discovery -- doctrine of equivalents -- difficulty in enforcing
business methods, software and biotechnology patents -- whether previous precedent is
binding on courts -- restrictions on legal counsel -- consideration of judicial reasoning
from other jurisdictions -- delay of proceedings -- preliminary injunctions -- costs -infringement remedies -- calculation of damages -- permanent injunctions -- typical
length of proceedings -- right to appeal -- mediation and arbitration -- whether courts are
pro-patentee -- accession to London Agreement on Translations -- other enforcement
issues.
Subject: Patent infringement--France
Subject: Patent enforcement--France
Subject: Legal procedure--France
SNIPER No.: 2013/01686
Author: Schüll, Gottfried
Title: Patents in Europe: Germany
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Source: Intellectual Asset Management. Patents in Europe 2013/2014, 2013, pp. 6770.
Summary: Patents -- Germany -- enforcement of European patent rights -- court
expertise in patents -- validity and infringement actions -- witness cross-examination -expert witnesses -- pre-trial discovery -- doctrine of equivalents -- difficulty in enforcing
business methods, software and biotechnology patents -- whether previous precedent is
binding on courts -- restrictions on legal counsel -- consideration of judicial reasoning
from other jurisdictions -- delay of proceedings -- preliminary injunctions -- costs -infringement remedies -- calculation of damages -- permanent injunctions -- typical
length of proceedings -- right to appeal -- mediation and arbitration -- whether courts are
pro-patentee -- accession to London Agreement on Translations -- other enforcement
issues.
Subject: Patent infringement--Germany
Subject: Patent enforcement--Germany
Subject: Legal procedure--Germany
SNIPER No.: 2013/01687
Author: Papaconstantinou, Helen G.
Title: Patents in Europe: Greece
Source: Intellectual Asset Management. Patents in Europe 2013/2014, 2013, pp. 7175.
Summary: Patents -- Greece -- enforcement of European patent rights -- court
expertise in patents -- validity and infringement actions -- witness cross-examination -expert witnesses -- pre-trial discovery -- doctrine of equivalents -- difficulty in enforcing
business methods, software and biotechnology patents -- whether previous precedent is
binding on courts -- restrictions on legal counsel -- consideration of judicial reasoning
from other jurisdictions -- delay of proceedings -- preliminary injunctions -- costs -infringement remedies -- calculation of damages -- permanent injunctions -- typical
length of proceedings -- right to appeal -- mediation and arbitration -- whether courts are
pro-patentee -- accession to London Agreement on Translations -- other enforcement
issues.
Subject: Patent infringement--Greece
Subject: Patent enforcement--Greece
Subject: Legal procedure--Greece
SNIPER No.: 2013/01688
Author: Hardarson, Gunnar Örn
Title: Patents in Europe: Iceland
Source: Intellectual Asset Management. Patents in Europe 2013/2014, 2013, pp. 7681.
Abstract: Patents -- Iceland -- enforcement of European patent rights -- court expertise
in patents -- validity and infringement actions -- witness cross-examination -- expert
witnesses -- pre-trial discovery -- doctrine of equivalents -- difficulty in enforcing
business methods, software and biotechnology patents -- whether previous precedent is
binding on courts -- restrictions on legal counsel -- consideration of judicial reasoning
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infringement remedies -- calculation of damages -- permanent injunctions -- typical
length of proceedings -- right to appeal -- mediation and arbitration -- whether courts are
pro-patentee -- accession to London Agreement on Translations -- other enforcement
issues.
Subject: Patent infringement--Iceland
Subject: Patent enforcement--Iceland
Subject: Legal procedure--Iceland
SNIPER No.: 2013/01689
Author: Solveni, Rossella
Title: Patents in Europe: Italy
Source: Intellectual Asset Management. Patents in Europe 2013/2014, 2013, pp. 8285.
Summary: Patents -- Italy -- enforcement of European patent rights -- court expertise in
patents -- validity and infringement actions -- witness cross-examination -- expert
witnesses -- pre-trial discovery -- doctrine of equivalents -- difficulty in enforcing
business methods, software and biotechnology patents -- whether previous precedent is
binding on courts -- restrictions on legal counsel -- consideration of judicial reasoning
from other jurisdictions -- delay of proceedings -- preliminary injunctions -- costs -infringement remedies -- calculation of damages -- permanent injunctions -- typical
length of proceedings -- right to appeal -- mediation and arbitration -- whether courts are
pro-patentee -- accession to London Agreement on Translations -- other enforcement
issues.
Subject: Patent infringement--Italy
Subject: Patent enforcement--Italy
Subject: Legal procedure--Italy
SNIPER No.: 2013/01690
Author: Claassen, Peter
Title: Patents in Europe: Netherlands
Source: Intellectual Asset Management. Patents in Europe 2013/2014, 2013, pp. 8791.
Summary: Patents -- Netherland -- enforcement of European patent rights -- court
expertise in patents -- validity and infringement actions -- witness cross-examination -expert witnesses -- pre-trial discovery -- doctrine of equivalents -- difficulty in enforcing
business methods, software and biotechnology patents -- whether previous precedent is
binding on courts -- restrictions on legal counsel -- consideration of judicial reasoning
from other jurisdictions -- delay of proceedings -- preliminary injunctions -- costs -infringement remedies -- calculation of damages -- permanent injunctions -- typical
length of proceedings -- right to appeal -- mediation and arbitration -- whether courts are
pro-patentee -- accession to London Agreement on Translations -- other enforcement
issues.
Subject: Patent infringement--Netherlands
Subject: Patent enforcement--Netherlands
Subject: Legal procedure--Netherlands
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SNIPER No.: 2013/01691
Author: Nordengen, Rune
Title: Patents in Europe: Norway
Source: Intellectual Asset Management. Patents in Europe 2013/2014, 2013, pp. 9296.
Summary: Patents -- Norway -- enforcement of European patent rights -- court
expertise in patents -- validity and infringement actions -- witness cross-examination -expert witnesses -- pre-trial discovery -- doctrine of equivalents -- difficulty in enforcing
business methods, software and biotechnology patents -- whether previous precedent is
binding on courts -- restrictions on legal counsel -- consideration of judicial reasoning
from other jurisdictions -- delay of proceedings -- preliminary injunctions -- costs -infringement remedies -- calculation of damages -- permanent injunctions -- typical
length of proceedings -- right to appeal -- mediation and arbitration -- whether courts are
pro-patentee -- accession to London Agreement on Translations -- other enforcement
issues.
Subject: Patent infringement--Norway
Subject: Patent enforcement--Norway
Subject: Legal procedure--Norway
SNIPER No.: 2013/01692
Author: Szczepanowska-Kozˆowska, Krystyna
Title: Patents in Europe: Poland
Source: Intellectual Asset Management. Patents in Europe 2013/2014, 2013, pp. 97101.
Summary: Patents -- Poland -- enforcement of European patent rights -- court expertise
in patents -- validity and infringement actions -- witness cross-examination -- expert
witnesses -- pre-trial discovery -- doctrine of equivalents -- difficulty in enforcing
business methods, software and biotechnology patents -- whether previous precedent is
binding on courts -- restrictions on legal counsel -- consideration of judicial reasoning
from other jurisdictions -- delay of proceedings -- preliminary injunctions -- costs -infringement remedies -- calculation of damages -- permanent injunctions -- typical
length of proceedings -- right to appeal -- mediation and arbitration -- whether courts are
pro-patentee -- accession to London Agreement on Translations -- other enforcement
issues.
Subject: Patent infringement--Poland
Subject: Patent enforcement--Poland
Subject: Legal procedure--Poland
SNIPER No.: 2013/01693
Author: Marginean, Dragosh
Title: Patents in Europe: Romania
Source: Intellectual Asset Management. Patents in Europe 2013/2014, 2013, pp. 102106.
Summary: Patents -- Romania -- enforcement of European patent rights -- court
expertise in patents -- validity and infringement actions -- witness cross-examination -expert witnesses -- pre-trial discovery -- doctrine of equivalents -- difficulty in enforcing
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business methods, software and biotechnology patents -- whether previous precedent is
binding on courts -- restrictions on legal counsel -- consideration of judicial reasoning
from other jurisdictions -- delay of proceedings -- preliminary injunctions -- costs -infringement remedies -- calculation of damages -- permanent injunctions -- typical
length of proceedings -- right to appeal -- mediation and arbitration -- whether courts are
pro-patentee -- accession to London Agreement on Translations -- other enforcement
issues.
Subject: Patent infringement--Romania
Subject: Patent enforcement--Romania
Subject: Legal procedure--Romania
SNIPER No.: 2013/01694
Author: Vidal-Quadras Trias de Bes, Miguel
Title: Patents in Europe: Spain
Source: Intellectual Asset Management. Patents in Europe 2013/2014, 2013, pp. 107111.
Summary: Patents -- Spain -- enforcement of European patent rights -- court expertise
in patents -- validity and infringement actions -- witness cross-examination -- expert
witnesses -- pre-trial discovery -- doctrine of equivalents -- difficulty in enforcing
business methods, software and biotechnology patents -- whether previous precedent is
binding on courts -- restrictions on legal counsel -- consideration of judicial reasoning
from other jurisdictions -- delay of proceedings -- preliminary injunctions -- costs -infringement remedies -- calculation of damages -- permanent injunctions -- typical
length of proceedings -- right to appeal -- mediation and arbitration -- whether courts are
pro-patentee -- accession to London Agreement on Translations -- other enforcement
issues.
Subject: Patent infringement--Spain
Subject: Patent enforcement--Spain
Subject: Legal procedure--Spain
SNIPER No.: 2013/01695
Author: Kenamets, Peter
Title: Patents in Europe: Sweden
Source: Intellectual Asset Management. Patents in Europe 2013/2014, 2013, pp. 112117.
Summary: Patents -- Sweden -- enforcement of European patent rights -- court
expertise in patents -- validity and infringement actions -- witness cross-examination -expert witnesses -- pre-trial discovery -- doctrine of equivalents -- difficulty in enforcing
business methods, software and biotechnology patents -- whether previous precedent is
binding on courts -- restrictions on legal counsel -- consideration of judicial reasoning
from other jurisdictions -- delay of proceedings -- preliminary injunctions -- costs -infringement remedies -- calculation of damages -- permanent injunctions -- typical
length of proceedings -- right to appeal -- mediation and arbitration -- whether courts are
pro-patentee -- accession to London Agreement on Translations -- other enforcement
issues.
Subject: Patent infringement--Sweden
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Subject: Patent enforcement--Sweden
Subject: Legal procedure--Sweden
SNIPER No.: 2013/01696
Author: Rüedi, Regula
Title: Patents in Europe: Switzerland
Source: Intellectual Asset Management. Patents in Europe 2013/2014, 2013, pp. 118122.
Summary: Patents -- Switzerland -- enforcement of European patent rights -- court
expertise in patents -- validity and infringement actions -- witness cross-examination -expert witnesses -- pre-trial discovery -- doctrine of equivalents -- difficulty in enforcing
business methods, software and biotechnology patents -- whether previous precedent is
binding on courts -- restrictions on legal counsel -- consideration of judicial reasoning
from other jurisdictions -- delay of proceedings -- preliminary injunctions -- costs -infringement remedies -- calculation of damages -- permanent injunctions -- typical
length of proceedings -- right to appeal -- mediation and arbitration -- whether courts are
pro-patentee -- accession to London Agreement on Translations -- other enforcement
issues.
Subject: Patent infringement--Switzerland
Subject: Patent enforcement--Switzerland
Subject: Legal procedure--Switzerland
SNIPER No.: 2013/01697
Author: Dereligil, Ersin
Title: Patents in Europe: Turkey
Source: Intellectual Asset Management. Patents in Europe 2013/2014, 2013, pp. 123127.
Summary: Patents -- Turkey -- enforcement of European patent rights -- court expertise
in patents -- validity and infringement actions -- witness cross-examination -- expert
witnesses -- pre-trial discovery -- doctrine of equivalents -- difficulty in enforcing
business methods, software and biotechnology patents -- whether previous precedent is
binding on courts -- restrictions on legal counsel -- consideration of judicial reasoning
from other jurisdictions -- delay of proceedings -- preliminary injunctions -- costs -infringement remedies -- calculation of damages -- permanent injunctions -- typical
length of proceedings -- right to appeal -- mediation and arbitration -- whether courts are
pro-patentee -- accession to London Agreement on Translations -- other enforcement
issues.
Subject: Patent infringement--Turkey
Subject: Patent enforcement--Turkey
Subject: Legal procedure--Turkey
SNIPER No.: 2013/01698
Author: Kazi, Ilya
Title: Patents in Europe: United Kingdom
Source: Intellectual Asset Management. Patents in Europe 2013/2014, 2013, pp. 128132.
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Summary: Patents -- United Kingdom -- enforcement of European patent rights -- court
expertise in patents -- validity and infringement actions -- witness cross-examination -expert witnesses -- pre-trial discovery -- doctrine of equivalents -- difficulty in enforcing
business methods, software and biotechnology patents -- whether previous precedent is
binding on courts -- restrictions on legal counsel -- consideration of judicial reasoning
from other jurisdictions -- delay of proceedings -- preliminary injunctions -- costs -infringement remedies -- calculation of damages -- permanent injunctions -- typical
length of proceedings -- right to appeal -- mediation and arbitration -- whether courts are
pro-patentee -- accession to London Agreement on Translations -- other enforcement
issues.
Subject: Patent infringement--United Kingdom
Subject: Patent enforcement--United Kingdom
Subject: Legal procedure--United Kingdom
SNIPER No.: 2013/00654
Author: Drahos, Peter, 1955Title: Patents, practical ethics and scientists
Source: Prometheus. Vol. 29 No. 3 September 2011, pp. 345-352.
Summary:
Subject: Patent systems--reform
Subject: Patent systems--history
SNIPER No.: 2013/01449
Author: Cockbain, Julian
Title: Petitions for review of EPO Appeal Board decisions by the EPO Enlarged Board
of Appeal: part III
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 6, June 2013, pp.
470-473.
General Note: Third article in a series of three. See also: 2010/00587 and 2011/00102.
Summary: Factors that have led to successful petitions before the Enlarged Board of
Appeal -- Art 112a of the European Patent Convention (EPC) allows parties to appeal
an EPO Appeal Board decision -- 3 out 99 petitions successful -- common factors in
success were procedural deficiencies on the side of the EPO -- first successful petition
R-7/09 OLYMPUS -- R-21/11 BAYER ANIMAL HEALTH -- R-3/10 SALMON BRANDS
case where Appeal Board was at fault -- desire by EPO Appeal Board to streamline oral
proceedings perhaps to blame -- lessons to be learnt from previous petitions -importance of preparation for parties to oral proceedings.
Subject: Patents--case law--Europe
SNIPER No.: 2013/01521
Author: Mansell, Carly
Title: Pharmaceutical trade marks containing INN stems: change of practice in Australia
Source: Australian Intellectual Property Law Bulletin. Vol. 26 No. 1, July 2013, pp. 1314.
Summary: Australian Trade Marks Office -- changed practice regarding examination of
applications for trade marks that contain an International Nonproprietary Name (INN)
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stem in respect of pharmaceutical, veterinary and pesticide products in class 5 -- now
takes a more flexible approach that better takes into account the market realities
relating to pharmaceutical trade marks.
Subject: Trade marks--pharmaceutical industry--Australia
Subject: Trade mark examination--procedure--Australia
SNIPER No.: 2013/01940
Author: Phillips, Jeremy
Title: Picking out the bad boys
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 8, August 2013, p.
577.
Summary: Changing attitude to intellectual property infringement in society -- many
areas in the intellectual property field have remained the same over recent decades -sympathy for intellectual property owners has decreased in recent times -pharmaceutical companies are seen as profiteers -- owners of brands for consumer
goods are blamed for the working conditions under which their goods are manufactured
-- copyright collecting societies are seen as greedy -- patent owners are castigated for
being 'non-practising entities' or as they are popularly labelled 'patent trolls' -- infringers
are no longer seen as necessarily all bad -- supply of counterfeit products to poor
countries are seen as welcome -- traders in grey goods -- relaxed attitude to copyright
infringement in the internet age.
Subject: Intellectual property--social aspects
Subject: Intellectual property--trends
SNIPER No.: 2013/01770
Author: Ricketson, Sam
Title: Plain packaging legislation for tobacco products and trade marks in the High
Court of Australia
Source: Queen Mary Journal of Intellectual Property. Vol. 3 No. 3, September 2013, pp.
224-240.
Summary: High Court of Australia rejected a constitutional challenge to the validity of
recent Australian legislation requiring plain packaging for tobacco products -- no
acquisition of 'property' by the Commonwealth unless this has been done on 'just terms'
-- no provision for compensation to tobacco companies with respect to IPRs, notably
registered trade marks -- was argued that the legislation was invalid as not complying
with this requirement -- obligations now imposed on tobacco companies to display
enhanced warning notices and other such material also did not constitute an acquisition
of the companies' property rights.
Subject: Trade marks--law and legislation--Australia
Subject: Intellectual property rights--manufacturing and processing industry
Subject: Trade dress--law and legislation--Australia
Subject: Trade mark owners' rights
Subject: Branding--Australia
SNIPER No.: 2012/02608
Author: Australian Centre for Intellectual Property in Agriculture
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Title: Plant patent law and practice: Australia, North America and Europe: discussion
paper
Source: Plant Patent Law and Practice: Australia, North America and Europe. 2011.
Summary: Review of plant patent law and practice in Australia, North America and
Europe -- part fulfilment of the Australian Research Council Discovery Project
DP0987639 'Promoting Plant Innovation in Australia: Maximising the Benefits of
Intellectual Property for Australian Agriculture' -- overview of relevant laws and current
legal doctrines affecting plant patenting -- patentable subject matter -- inventive step
and enablement -- sufficiency and enablement-- consequences of a shift towards the
use of patents to protect plant innovations -- scope of protection -- farm-saved seed -analysis shows that the intellectual property landscape relating to the protection of plant
varieties, both genetically-modified and traditionally-bred, are still shifting and uncertain
-- situation appears likely to continue for some time to come.
Subject: Plant rights systems--Australia
Subject: Plant rights systems--United States
Subject: Plant rights systems--Europe
Subject: Patentability--biotechnology industry
SNIPER No.: 2013/01915
Author: Frederick, Mareesa A.
Title: Planting the seeds of infringement: the application of the first sale doctrine to selfreplicating technology
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of
Patent Agents. Vol. 42 No. 6, June 2013, pp. 324-326.
Summary: Patent infringement -- patented Monsanto's Roundup ready soybean seeds
-- Supreme Court of the United States decision -- Bowman v Monsanto Company -- first
sale doctrine does not permit a purchaser of a patent product to make copies of the
patented product -- decision impacts on farming practices in the US.
Subject: Patent infringement--case law--United States
Subject: Genetic engineering--agriculture industry
Subject: Patent exhaustion--United States
SNIPER No.: 2013/01862
Author: Kolczyński, Janusz Piotr
Title: Polish Supreme Court rules that exclusive rights related to a protected trade mark
do not cover spatial content (material) that is the inspiration for that trade mark
Source: European Intellectual Property Review. Vol. 35 No. 7, 2013, pp. 426-429.
Summary: Hochland Aktiengesellschaft based in Heimenkirch Allgäu (Germany),
Hochland Reich, Summer & Co KG based in Heimenkirch (Germany) and Hochland sp.
z o.o. based in Kazmierz (Poland) v Okregowa Spoldzielnia Mleczarslka w Piatnicy -dairy products with similar three dimension marks used in packaging representing a
wooden milk pail -- spatial trade marks -- 3D trade mark -- CJEU refusal to grant
protection of a three-dimensional sign comprising the shape of a chocolate rabbit with a
red ribbon (as a Community trade mark), produced by Lindt -- may potentially be subject
to protection under copyright law.
Subject: Trade mark infringement--Poland
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SNIPER No.: 2013/01575
Author: Neu, Timm
Title: Post-grant patent examination after the America Invents Act
Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 44
No. 4, June 2013, pp. 445-455.
Summary: Contesting granted patents under the America Invents Act -- third party preissuance submissions -- ex parte and inter partes reexaminations -- post-grant review -procedural frameworks for filing before the Patent Trial and Appeal Board (PTAB) -business method patents exception -- comparison to European Patent Office
proceedings -- supplemental examination -- derivation proceedings and interferences -advantages and disadvantages of post-grant procedures compared to court litigation
Subject: United States. Leahy-Smith America Invents Act
Subject: Patent systems--United States
Subject: Patent opposition--United States
SNIPER No.: 2013/01937
Author: Dent, Chris
Added author: Intellectual Property Research Institute of Australia.
Title: The (potential) regulatory function of contractual clauses: restraints of trade and
confidential information in employment contracts
Source: Australian Journal of Labour Law. Vol. 26 No.1, 2013, pp. 1-19.
Summary: Notion of 'decentred regulation' -- adopted to explore the idea that individual
contractual clauses have the capacity to regulate the behaviour of employers and
employees -- focus on restraint of trade and confidentiality clauses -- ideal exemplars -one operates, during the course of employment -- the other takes effect postemployment -- they are peripheral to the main clauses in a contract of employment -concepts of norms and normative practices -- locating their use within the psychological
contract -- individual clauses can regulate the behaviour of employers and employees
as long as the existence of the obligations are emphasised and the normative basis for
the clauses is communicated effectively.
Subject: Trade secrets
Subject: Contract law
SNIPER No.: 2013/01937
Author: Dent, Chris
Added author: Intellectual Property Research Institute of Australia.
Title: The (potential) regulatory function of contractual clauses: restraints of trade and
confidential information in employment contracts
Source: Australian Journal of Labour Law. Vol. 26 No.1, 2013, pp. 1-19.
Summary: Notion of 'decentred regulation' -- adopted to explore the idea that individual
contractual clauses have the capacity to regulate the behaviour of employers and
employees -- focus on restraint of trade and confidentiality clauses -- ideal exemplars –
one operates, during the course of employment -- the other takes effect postemployment -- they are peripheral to the main clauses in a contract of employment -concepts of norms and normative practices -- locating their use within the psychological
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contract -- individual clauses can regulate the behaviour of employers and employees
as long as the existence of the obligations are emphasised and the normative basis for
the clauses is communicated effectively.
Subject: Trade secrets
Subject: Contract law
SNIPER No.: 2013/01984
Author: Bassil, Nick
Title: Practical implications of the unitary patent system in Europe
Source: Pharmaceutical Patent Analyst. Vol. 2 No. 5, September 2013, pp. 585-590.
Summary: Overview of developments and key features of the new system -- practical
considerations -- ratification of the UPC Agreement -- unitary patent -- UPC system -participating/contracting EU member states -- standard European patents granted by
the EPO -- practical consequences of the new system -- patent filing -- patent grant -opposition -- patent enforcement.
Subject: Patent systems--Europe
Subject: Regional patents--Europe
SNIPER No.: 2013/01342
Author: Yates, David L.
Title: Practical lessons for trade mark licensing and management arising from recent
cases that considered the meaning of "consent of the registered owner" under s 123 of
the Trade Marks Act
Source: Australian Intellectual Property Law Bulletin. Vol. 25 No. 10, June 2013, pp.
205-209.
Summary: Recent Federal Court cases -- provided clarity for trade mark owners who
operate multi-jurisdiction licensing programs in relation to the extent to which they will
have been considered to have consented, for the purpose of the Trade Marks Act 1995
(Cth), to the application of their trade marks to goods imported from other jurisdictions -the issue of consent in relation to trade mark licensing -- implications for
multijurisdictional portfolio management -- Sporte Leisure Pty Ltd v Paul's International
Pty Ltd (No 3) -- Lonsdale Australia Ltd v Paul's Retail Pty Ltd.
Subject: Trade mark licensing
Subject: Trade mark ownership
Subject: Trade mark use
SNIPER No.: 2013/01968
Author: Zhao, Yan
Title: Preliminary injunctions in intellectual property disputes in China
Source: World Intellectual Property Report. Vol. 27 No. 8, August 2013, pp. 37-38.
Summary: Patent, trade mark and copyright rights holders in China cautious about
using preliminary injunctive relief in IP disputes -- high success rates shown in
preliminary statistical review of court decisions -- recent changes to Civil Procedure Law
-- Article 101 clearly sets out that relevant parties entitled to seek preliminary injunctions
to avoid irreparable harm --must file suit within 30 days after grant of preliminary
injunction -- extends relief to other IP disputes, such as trade secrets.
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Subject: Injunctions--China
Subject: Intellectual property enforcement--China
Subject: Legal procedure--China
SNIPER No.: 2013/01452
Title: Prerequisites for trade mark infringement in transit: Clinique Happy
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 6, June 2013, pp.
486-490.
Summary: Enforcement of trade mark rights in transit cases a decision from the
German Federal Court of Justice (BGH) -- German Court of Justice Decision of 25 AprilCase No I ZR 235/10 -- plaintiff part of E-Group -- defendant a forwarding agent -'Clinique' and 'Clinique happy' -- counterfeit perfume products -- possibility of
infringement with importation of products into Germany and the transit of goods through
Germany to other nations -- uninterrupted customs seal -- injunctive relief -- tort -conflict of laws -- Russian competition law -- German Act Against Unfair Competition
(UWG) -- principle of territoriality.
Subject: Trade mark infringement--case law--Germany
Subject: Customs
SNIPER No.: 2013/01090
Author: Rijsdijk, Michiel
Title: Pressing problem: printing plates in the Netherlands
Source: World Intellectual Property Review. January-February 2013, p. 63.
Review: Agfa v Xingraphics -- Agfa claimed Xingraphics products indirectly infringe its
patent -- claimed, alongside ancillary claims (for an infringement decision, an injunction
and compensation), prohibition of Xingraphics' products -- Xingraphics claimed an order
prohibiting indiscriminate claims alleging infringement of its patent -- claimed that the
patent was void -- requested a declaratory decision that its FIT plates do not (indirectly)
infringe the Dutch and foreign parts of the patent -- Agfa partially challenged the
jurisdiction of the court -- district court of The Hague denied Agfa's claim -- denied
Xingraphics' counterclaims -- declared that it lacks jurisdiction in the matter of the
declaratory decision of non-infringement for the foreign parts of the patent -- court of
appeal decision.
Subject: Patent infringement--case law--Netherlands
Subject: Patent validity--case law--Netherlands
SNIPER No.: 2013/01784
Author: McCallig, Damien
Title: Private but eventually public: why copyright in unpublished works matters in the
digital age
Source: SCRIPT-ed. Vol. 10 No. 1, April 2013, pp. 39-56.
Summary: Links between copyright and privacy in unpublished works -- effects of
digital technology -- public versus private domains -- historic development of perpetual
protection for unpublished works -- posthumous publication -- establishment of a
copyright unpublished public domain -- United States Copyright Act 1976 -- European
Copyright Term Directive 1993.
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Subject: United States. Copyright Act of 1976
Subject: European Parliament. Directive 93/98/EEC of 29 October 1993 harmonising
the term of protection of copyright and certain related rights
Subject: Copyright
Subject: Electronic copyright
Subject: Public domain
SNIPER No.: 2013/01670
Author: Minderop, Ralph
Title: Prodrugs and metabolites: in the twilight zone of patentability?
Source: Intellectual Asset Management. No. 60, July/August 2013, pp. 117-120.
General Note: IAM Supplement: IP in the Life Science Industries 2013.
Summary: Prodrugs -- scientific background -- devising patent claims covering
prodrugs -- relationship between prodrugs and their metabolites -- scope of metabolite
patents.
Subject: Pharmaceuticals--patentability
Subject: Patent claims--pharmaceutical industry
Subject: Patent specifications--pharmaceutical industry
SNIPER No.: 2013/01782
Author: Mandy, A. Sasha
Title: Product-by-process claims in Canada: useful or useless?
Source: World Intellectual Property Report. Vol. 27 No. 7, July 2013, pp. 45-47.
Summary: Canadian Federal Court decision in Bayer Inc. v. Cobalt Pharmaceuticals
Company -- provides guidance on how "product-by-process" claims are to be
interpreted -- claiming a known medicinal drug made according to a new and nonobvious process -- facts of the case -- analysis of the decision -- product-by-process
claims not always easy to enforce -- usually found to be invalid unless they relate to a
product which is itself new
Subject: Pharmaceuticals--case law--Canada
Subject: Patent claims--case law--Canada
Subject: Patent infringement--pharmaceutical industry--Canada
SNIPER No.: 2013/01812
Author: Hardy, Jeffrey
Title: Promoting and protecting the value of intellectual property in Kenya
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
13-17.
Summary: Role of intellectual property rights -- counterfeiting and piracy in Africa -- the
situation in Kenya -- policy, law and practice in Kenya -- Business Action to Stop
Counterfeiting and Piracy (BASCAP) -- legislative and policy recommendations to
address challenges.
Subject: Counterfeiting--Kenya
Subject: Intellectual property law--reform--Kenya
SNIPER No.: 2013/01982
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Author: Smaggasgale, Gill
Title: Proposals to broaden the UK bolar defence
Source: Pharmaceutical Patent Analyst. Vol. 2 No. 5, September 2013, pp. 573-575.
Summary: Proposed change to UK Patents Act -- exempt the experimentation
necessary to achieve regulatory approval, including clinical and field trials -- health
technology assessments for new drugs from a claim of patent infringement -- early
access to new treatments for patients -- exemption is not limited to non-commercial
purposes -- confirmed in Monsanto v. Stauffer R.P.C. 515 CA (1985) -- amendment to
be introduced before the end of 2013 -- desirable to be in force before the Unitary
Patent Agreement.
Subject: Experimental use (Patents)--pharmaceutical industry--United Kingdom
Subject: Patents--reform--United Kingdom
SNIPER No.: 2013/01076
Title: Protecting a billion dollar brand
Source: World Intellectual Property Review. January-February 2013, pp. 38-40.
Summary: UGG brand footwear -- interview with director of brand protection at parent
company Deckers Outdoor Corporation, Leah Evert-Burks -- Australian Brian Smith
began selling sheepskin-lined boots in surf shops in the United States under the name
'UGG Australia -- sold to Deckers in 1995 for $15 million -- sales in 2011 totalled $1.4
billion -- online counterfeiting -- auction sites and spam mail -- preventive measures -the future for UGG
Subject: Brand management
Subject: Intellectual property infringement
Subject: Counterfeiting
SNIPER No.: 2013/01394
Author: Pilar López, María del
Title: Protection of famous and well-known trademarks
Source: World Intellectual Property Review. Annual, 2013, pp. 48-49.
Summary: Statute of limitations of well-known marks -- a definition is not included in
both the Paris Convention and the Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS) -- a well-known mark in one jurisdiction will not be found wellknown in another -- lack of unity in the declaration of notoriety -- 'notorious' in the
member country of registration.
Subject: Famous trade marks--law and legislation
SNIPER No.: 2013/01403
Author: Papageorge, Ike
Title: A race against time: trademarks and raising the bar
Source: World Intellectual Property Review. Annual, 2013, pp. 82-84.
Summary: Trade mark opposition landscape in Australia -- Raising the Bar legislation -came into effect on April 15, 2013 -- working with the changes -- review of trade mark
procedures -- cut to opposition delays -- extension requests -- cooling off period -evidence period.
Subject: Australia. Intellectual Property Laws Amendment (Raising the Bar) Act 2012
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Subject: Trade mark systems--reform--Australia
SNIPER No.: 2013/01867
Author: Newton, Jill
Title: Raising the bar: patent law reform legislation applied retrospectively to refuse
amendments to patent application
Source: Australian Intellectual Property Law Bulletin. Vol. 26 No. 2, August 2013, pp.
38-40.
Summary: Deputy Commissioner of Patents refused Euroceltique SA's request to
amend its Australian patent application, despite the amendments being allowable -2002 Euroceltique application -- background to proposed amendments to the 2002
Euroceltique application -- newly introduced s. 112A of the Patents Act -- s. 112A and
its effect.
Subject: Patent systems--reform--Australia
Subject: Patent amendment--Australia
SNIPER No.: 2013/01450
Author: Makulilo, Alex B.
Title: Re-balancing artists' rights in cell phone ringtones?: An analysis of Tanzanian
copyright
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 6, June 2013, pp.
474-479.
Summary: Copyright issues from cell phone ringtones in the Tanzanian music industry
-- Tanzanian Copyright Act and its regulations are examined -- no case law is available
yet from Tanzanian courts -- copyright legislation and cell phone ringtones in other
countries especially African countries -- report from The Citizen newspaper -- artists
receive a small share of the earnings in Tanzania -- targeting of companies by artist
petitions -- examination of issue at Parliamentary budget session -- Copyright Society of
Tanzania (COSOTA) role -- copyright in ringtones -- rights and owners of rights in
ringtones -- licence and royalties -- COSOTA often bypassed -- enforcement of
Copyright Act difficult in Tanzania for many reasons -- common remuneration standards
needed to meet the requirements of the Copyright Act.
Subject: Copyright--law and legislation--Tanzania
Subject: Sound recordings--Tanzania
Subject: Musical works--Tanzania
SNIPER No.: 2013/00231
Author: Mao, Jin
Title: Reflection on introduction of design space element in determination of design
patent
Source: China Patents and Trademarks. Vol. 111 No. 4, October 2012, pp. 31-35.
Summary: Invalidation of a patent for the design of "motorcycle wheel" product -concept of design space -- foreign legislation on design space of design patent -feasibility to introduce design space factor -- considerations of system construction.
Subject: Patent validity--China
Subject: Industrial designs--manufacturing and processing industry--China
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SNIPER No.: 2013/01723
Author: Liu, Zhen
Title: Reflection on legal issues involving understanding and application of Article 33 of
Patent Law
Source: China Patents and Trademarks. Vol. 113 No. 2, April 2013, pp. 57-63.
Summary: Patent description -- amendment of specifications beyond the disclosed
description -- China -- relationship between Article 33 and other sections of the Patent
Law -- determination from the perspective of the person skilled in the art -- examiner
consideration of previous office actions -- need for balance between applicant and
public interests.
Subject: Patent amendment--China
Subject: Patent specifications--China
SNIPER No.: 2013/01783
Author: Tessensohn, John A.
Title: Refuting trademark registrations in Japan: a lesson from Amazon/Apple Appstore
case
Source: World Intellectual Property Report. Vol. 27 No. 7, July 2013, pp. 47-48.
Summary: Ongoing trade mark litigation in the US and Japan between Apple and
Amazon -- Apple sued to stop Amazon's use of "Appstore" for its marketplace for online
software -- Apple's false advertising claim was dismissed -- in Japan, Amazon argued
for revocation of the mark for lack of distinctiveness -- dismissed by the Opposition
Board of Appeals of the Japan Patent Office (JPO) -- losing opponents have no right of
appeal under Japan's post-grant opposition system -- procedurally better to file
invalidation appeal at the JPO -- allowed to appeal adverse JPO decision to the
Intellectual Property High Court of Japan -- similarities and differences between the
opposition system and the trade mark invalidation appeal system
Subject: Trade mark distinctiveness--case law--Japan
Subject: Trade mark opposition--Japan
Subject: Trade mark validity--Japan
SNIPER No.: 2013/01299
Author: Chew, Kherk Ying
Title: Registrar's evidence must be heard before a trademark is expunged
Source: World Intellectual Property Review. March-April 2013, p. 57.
Summary: Ho Tack Sien & Ors v Rotta Research Laboratorium SpA & Anor -respondent manufactured a drug called Viartril-S used in the treatment of osteoarthritis - respondent sued the appellants in the High Court for infringement and passing off of
its Viartril-S mark -- sought to expunge the registration of the Artril 250 mark -- third
appellant's packaging for Artril 250 also comprised a similar get-up to the packaging of
Viartril-S -- High Court ordered the 'Artril 250' mark to be expunged from the register -appellants appealed to the Court of Appeal -- Court of Appeal's decision.
Subject: Evidence--Malaysia
Subject: Trade mark cancellation--Malaysia
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SNIPER No.: 2013/01758
Author: Chaudri, Abida
Title: A religious experience
Source: Intellectual Property Magazine. July-August 2013, pp. 70-71.
Summary: Copenhagen Maritime and Commercial High Court -- Prelatura Del Opus
Dei Region de España v Dema Games ApS -- Prelatura sued for trade mark
infringement, cancellation of Dema's Danish trade mark registration and cancellation /
assignment of Dema's 'Opus Dei' domain name registrations -- Dema responded by
seeking invalidity and revocation of the Prelatura's Community trade mark registration -invalidity -- revocation -- infringement.
Subject: Trade mark infringement--case law--Denmark
Subject: Famous trade marks--Denmark
SNIPER No.: 2013/01387
Author: Cornwell, David K. S.
Title: Renewed energy for a small claims patent court
Source: World Intellectual Property Review. Annual, 2013, pp. 20-22.
Summary: Proposal of a small claims court -- designed as a forum for all lawsuits that
are not suitable for a district court or the ITC -- deterrent for bad cases -- appeals
process -- specialised expertise -- purpose is to encourage the parties to litigate at the
USPTO in an environment of expertise and limited cost -- patent lawsuits are not usually
practical unless the potential damages (or value of the injunction) outweigh the legal
fees.
Subject: Patent litigation--reform--United States
Subject: Patent litigation--costs--United States
SNIPER No.: 2013/01385
Author: Le Cointe, Clémence
Title: Reputation and proof: protecting a well-known trademark
Source: World Intellectual Property Review. Annual, 2013, pp. 14-16.
Summary: Famous and well-known marks -- protecting a well-known mark -- protection
offered -- proof of character -- international protection governed by Article 6bis of the
Paris Convention and Article 16.3 of the Trade-Related Aspects of IP Rights (TRIPS)
Agreement -- Office for Harmonization in the Internal Market (OHIM) -- Botolist and
Botocyl take unfair advantage of the reputation of the earlier 'Botox' marks -- trade mark
owners can face difficulties to prove that their trade mark is well-known in order to
obtain benefit from wider protection offered -- grounds for refusal.
Subject: Famous trade marks--law and legislation
SNIPER No.: 2013/01181
Author: Bartels, Anja
Title: Research Affiliates LLC v Commissioner of Patents
Source: Australian Intellectual Property Law Bulletin. Vol. 25 No. 9, April-May 2013, pp.
194-197.
Summary: Research Affiliates LLC v Cmr of Patents -- appeals from two hearing
decisions of the Australian Patent Office -- two patent applications in the name of
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Research Affiliates were refused on the basis that the claims do not constitute a manner
of manufacture within the meaning of s. 6 of the Statute of Monopolies 1623 -Honourable Justice Emmett of the Federal Court of Australia dismissed the appeals -key points for patent attorneys and intellectual property lawyers -- facts of the case -the claimed invention -- relevant legal principles -- hearing decisions by the Australian
Patent Office -- analysis of the decision -- impact of the decision.
Subject: Computer-related inventions--patentability--Australia
Subject: Patentability--case law--Australia
SNIPER No.: 2013/01855
Author: Bostyn, Sven J. R.
Title: Resolving the conundrum of the patentability of plants produced by an essentially
biological process: squarring the circle?
Source: European Intellectual Property Review. Vol. 35 No. 7, 2013, pp. 383-396.
Summary: Patentability of plant material -- patent protection for products made by nonpatentable essentially biological processes -- whether allowing such product claims
would not go beyond what the legislature would have wanted to protect in the plant
realm -- separation of claim categories is equally a fundamental patent law principle -clarifying the definition -- evaluation -- patentability of microbiological processes and
their products -- claim category to be seen independently -- exclusions must be
interpreted restrictively -- in favour and against patenting products produced by an
essentially biological process -- Enlarged Board of Appeal (EBA) -- Biotech Directive.
Subject: Plant breeder's rights--patentability
Subject: Biotechnology--patentability
SNIPER No.: 2013/01855
Author: Bostyn, Sven J. R.
Title: Resolving the conundrum of the patentability of plants produced by an essentially
biological process: squarring the circle?
Source: European Intellectual Property Review. Vol. 35 No. 7, 2013, pp. 383-396.
Summary: Patentability of plant material -- patent protection for products made by nonpatentable essentially biological processes -- whether allowing such product claims
would not go beyond what the legislature would have wanted to protect in the plant
realm -- separation of claim categories is equally a fundamental patent law principle -clarifying the definition -- evaluation -- patentability of microbiological processes and
their products -- claim category to be seen independently -- exclusions must be
interpreted restrictively -- in favour and against patenting products produced by an
essentially biological process -- Enlarged Board of Appeal (EBA) -- Biotech Directive.
Subject: Plant breeder's rights--patentability
Subject: Biotechnology--patentability
SNIPER No.: 2013/01407
Author: Perraki, Marina
Title: Responses to trademark dilution
Source: World Intellectual Property Review. Annual, 2013, pp. 98-100.
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Summary: Landmark CJEU (Court of Justice of the European Union) rulings in regards
to trade mark dilution -- C-408/01 of 23 October 2003 Adidas Salomon AG and Adidas
Benelux BV v Fitnessworld Trading Ltd -- similarity of marks is not the same in the
context of dilution -- misunderstanding of the dilution doctrine -- C-252/07 of 27
November 2008 Intel Corp Inc v CPM United Kingdom Ltd -- Intel attempted to define
dilution within the European context -- C-487107 of 18 June 2009 L'Oreal SA, Lancôme
parfums et beaute & Cie SNC, Laboratoire Garnier & Cie v Bellure NV, Malaika
Investments Ltd, Starion International Ltd -- court made reference to a "new" trade mark
function -- investment function of a trade mark -- C-100/11 P of 10.5.2012 Helena
Rubinstein, L'Oreal SA v Office for Harmonization in the Internal Market (Trade Marks
and Designs), Allergan Inc -- reputation of earlier famous trade marks -- implications for
national legal practice.
Subject: Trade mark dilution--case law--Europe
Subject: Famous trade marks--Europe
SNIPER No.: 2013/02012
Author: Gurry, Francis
Added author: World Intellectual Property Organization
Title: Re-thinking the role of intellectual property
Source: Re-Thinking the Role of Intellectual Property. 2013
General Note: The Francis Gurry Lecture, 2013.
Summary: Traditional explanations for IP -- transmission of knowledge -- rise of
intangibles -- geopolitical shift from West to East -- empowerment of non-state actors -IP as a regulator of competitive behaviour -- IP as the mechanism for finding equilibrium
amongst competing interests -- IP as a financing mechanism -- dominant themes and
questions -- policy-making in the new environment.
Subject: Intellectual property systems
Subject: Intellectual property
SNIPER No.: 2013/01919
Author: Pyrah, Alli
Title: Reverse payments shot down in US and EU
Source: Managing Intellectual Property. No. 231, July-August 2013, pp. 8-9.
Summary: United States Supreme Court ruling in Federal Trade Commission v Actavis
-- pharmaceutical companies can be sued for antitrust violations when a brand name
drug company pays a generic rival to keep a copycat drug off the market -- overturned a
ruling by the Court of Appeals for the Eleventh Circuit -- payments are permissible
provided they do not keep competitors off the market for longer than the term of the
patent covering the drug -- practice known as 'reverse payment' or 'pay-to-delay' deal.
Subject: Competition (Economics)--case law
Subject: Pharmaceuticals
SNIPER No.: 2013/01678
Author: Korsten, Mari
Title: The revival of cross-border injunctions
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Source: Intellectual Asset Management. Patents in Europe 2013/2014, 2013, pp. 2630.
Summary: Cross-border injunctions in preliminary proceedings -- Europe -- effect of
Brussels Regulation -- past practice by Dutch courts and European Court of Justice
(ECJ) -- Solvay v. Honeywell -- practice after Solvay v. Honeywell -- likely impact of
Unified Patent Court (UPC).
Subject: Unified Patent Court
Subject: European Parliament. Regulation (EC) No 44/2001 of 22 December 2000 on
jurisdiction and the recognition and enforcement of judgments in civil and commercial
matters
Subject: Injunctions--Europe
Subject: Patent infringement--Europe
SNIPER No.: 2013/01503
Author: Smith, Joel
Title: The right to obtain information of wrongdoing versus an individual's Data
Protection Rights: the UK Supreme court considers Norwich Pharmacal relief
Source: European Intellectual Property Review. Vol. 35 No. 3, 2013, pp. 170-172.
Summary: Rugby Football Union (RFU) v Viagogo Ltd -- terms and conditions of the
sale of tickets -- Norwich Pharmacal relief used in many different cases in order to
obtain disclosure -- RFU's application for relief -- data protection Directive 95/46 -Supreme Court's decision.
Subject: Privacy--information technology industry
Subject: Intellectual property infringement--case law--United Kingdom
Subject: Intellectual property law--United Kingdom
SNIPER No.: 2013/01749
Author: Shields, Mary
Title: RIP.com
Source: Intellectual Property Magazine. July-August 2013, pp. 49-50.
Summary: Internet Corporation for Assigned Names and Numbers (ICANN) -- internet
expansion program -- enabling new generic top-level domains (gTLDs) to be registered
-- ICANN's statistical review of the applications -- some of the gTLDs applied for -applicants -- debate around big brand and corporate applications and the applicant's
ability to apply for certain gTLDs -- .brand registrations -- a single gTLD -- applications
for a brand and a host of other gTLDs, some of which are generic -- review of the
applications for .app -- number of other brands and organisations with pending
registrations which could restrict access to a particular gTLD to their own products and
information.
Subject: Domain name registration
Subject: Domain name registries
SNIPER No.: 2013/00239
Author: Zhang, Guangliang, 1970Title: Risks from trade secret infringement dispute in foreign countries: comments on
Tianrui case
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Source: China Patents and Trademarks. Vol. 111 No. 4, October 2012, pp. 98-101.
Summary: Protection accorded to trade secret owners in the United States -- United
States Court of Appeals for the Federal Circuit -- decision with far reaching
consequences for trade secret enforcement efforts by US companies -- TianRui Group
Co, et al v International Trade Commission (lTC) -- controversy over the case -- impact
of the case on Chinese businesses -- Tianrui case has increased the risk for Chinese
businesses exporting products to the United States in connection with trade secrets.
Subject: Trade secrets--China
Subject: Trade secrets--case law--United States
SNIPER No.: 2013/01911
Author: Briggs, Nicholas
Title: Schütz v Werit: it's all in the making
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of
Patent Agents. Vol. 42 No. 6, June 2013, pp. 308-311.
Summary: Patent infringement litigation -- intermediate bulk containers (IBCs) used to
transport liquids -- decision on the extent to which replacing a consumable part of a
larger patented product should be regarded as patent infringement -- background to the
case -- "whole inventive concept" a key part of the Supreme Court's judgment -- implied
licence to repair.
Subject: Patent infringement--case law--United Kingdom
Subject: Patents--law and legislation--United Kingdom
Subject: Spare parts--case law--United Kingdom
SNIPER No.: 2013/01085
Author: Künzel, Jens
Title: Scope of protection of community designs: the Kinderwagen II case
Source: World Intellectual Property Review. January-February 2013, p. 58.
Summary: Germany's Federal Supreme Court -- hands down a high number of
decisions dealing with matters of design law -- above the average handed down since
the new German Designs Act and the Community Design Regulation (CDR) took effect
-- may be due to the fact that the practice has raised many questions of fact and law
that the court is only now answering -- string of decisions has clarified questions in
respect of validity and infringement of designs -- important issue remaining -- how to
ascertain the scope of protection of a given design in relation to the prior art -- what
rules will guide the practitioner in this field -- CDR and the Designs Act contain
provisions on the scope of protection -- Kinderwagen II case.
Subject: Industrial designs--case law--Germany
Subject: Industrial design rights--Germany
SNIPER No.: 2013/01293
Author: Yang, Stephen
Title: Search in examinations on utility model and designs
Source: World Intellectual Property Review. March-April 2013, p. 50.
Summary: State Intellectual Property Office of China (SIPO) -- draft amendment to the
Guidelines for Examination -- relates to the preliminary examination of utility model
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applications and industrial design applications -- in Chinese patent practice, there are
no substantive examinations for utility model and design applications -- examination for
utility model and design applications is called the preliminary examination -- what is
included in preliminary examination -- guidelines prescribe that examiners usually will
not conduct searches -- many double patenting problems -- draft amendment aims at
encouraging examiners to actively discover prior art or prior design, so as to avoid
double patenting problems -- improve the overall quality of Chinese utility model and
design patents -- revisions.
Subject: Patent examination--reform--China
Subject: Inventive step--China
SNIPER No.: 2013/01283
Title: Shaking up the EU trademark system
Source: World Intellectual Property Review. March-April 2013, pp. 16-21.
Summary: European Commission (EC) -- review of Europe's trade mark system -- laws
and practices of its member states must converge more -- clearer picture of how the
Commission wants to achieve harmonisation -- Community trademark (CTM) regulation
-- recast trade mark directive -- new fees -- seeking to foster innovation and economic
growth -- making trade mark registration more accessible and efficient -- lower costs
and complexity -- increased speed -- greater predictability -- legal security.
Subject: Trade marks--reform--Europe
Subject: Harmonisation of laws--Europe
SNIPER No.: 2013/01870
Title: The shape of things to come
Source: World Intellectual Property Review. May-June 2013, pp. 14-17.
Summary: 3D printing presents tremendous opportunities for business -- print on
demand -- sell licences to print products locally -- huge impact on the supply chain -benefits to the environment -- benefits for companies -- how 3D printers work -- brand
owners at serious risk of counterfeiting, piracy and patent and trade mark infringement - intellectual property (IP) law does not provide protection against domestic copying -out dated IP laws -- ease of infringement -- piracy worries -- how can designers and
inventors contend with out-dated IP laws and an online community that favours opensource models? -- possible solutions.
Subject: Manufacturing and processing industry
Subject: Intellectual property infringement
SNIPER No.: 2013/01479
Author: Joshi, Rajul G.
Title: Sharing the benefits of commercialisation of traditional knowledge: what are the
key success factors?
Source: Intellectual Property Forum. No. 93, June 2013, pp. 60-66
Summary: Corporations recently showing interest in traditional knowledge, especially in
medicine -- philosophical differences between traditional knowledge and western
science -- intellectual property protection issues -- the concept of benefit-sharing -- re-
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visiting the notion of benefit-sharing -- understanding of primary concepts -- relationship
between stakeholders
Subject: Benefit sharing
Subject: Traditional knowledge
Subject: Intellectual property rights
Subject: Indigenous issues in intellectual property
SNIPER No.: 2013/01572
Author: Jaeger, Thomas, LL. M.
Title: Shielding the Unitary Patent from the ECJ: a rash and futile exercise
Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 44
No. 4, June 2013, pp. 389-391.
Summary: Unitary patent in Europe -- background to legal framework -- doubts and
pitfalls still ahead -- bad system that needs to be substantially re-thought and remodelled -- questions why the EU legislator used unusual and arguably legally deficient
techniques to create an EU intellectual property right -- claim that the aim is to avoid the
jurisdiction of the European Court of Justice (ECJ) in interpreting patent law -outstanding jurisdictional record of the ECJ
Subject: Regional patents--Europe
Subject: Legal jurisdiction--Europe
SNIPER No.: 2013/01659
Author: Clover, Sara-Jayne
Title: Shining stars of IP
Source: Intellectual Asset Management. No. 60, July/August 2013, pp. 17-23.
Summary: 2013 entrants to IP Hall of Fame -- Miles Alexander, US intellectual property
lawyer -- Stephen Ladas, IP pioneer and author -- Peter Meier-Beck, presiding judge,
German Federal Court of Justice -- Peter Dirk Siemsen, Brazilian IP lawyer -- Herbert
Wamsley, Executive Director, Intellectual Property Owners' Association.
Subject: Alexander, Miles J.
Subject: Ladas, Stephen P. 1898-1976
Subject: Meier-Beck, Peter
Subject: Siemsen, Peter Dirk
Subject: Wamsley, Herbert C.
Subject: Intellectual property--interviews
SNIPER No.: 2013/01574
Author: Dnes, Antony W.
Title: Should the UK move to a fair-use copyright exception?
Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 44
No. 4, June 2013, pp. 418-444.
Summary: Whether there are advantages in moving the UK closer to a position
allowing courts to accept a claim of fair use as a general defence to a claim of copyright
infringement -- comparison between the operation of enumerated purposes for fair
dealing in the UK and US approach to copyright exceptions based on fair use -- nature
of transformative use of existng expressive work -- encouraging innovative work is part
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of the EU jurisprudence -- increasing impact on UK courts -- argue for fair use in UK and
wider context
Subject: Fair use (Copyright)--United Kingdom
Subject: Fair use (Copyright)--United States
Subject: Copyright infringement--United Kingdom
SNIPER No.: 2013/01808
Author: Lee, Angeline
Title: Similar marks?
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 3, March 2013, pp. 4950.
Summary: Trade mark decision in Singapore High Court -- Staywell Hospitality Group
Pty Ltd v. Starwood Hotels & Resorts Worldwide, Inc and another [2012] SGHC 204 -St Regis/Park Regis consumer confusion -- objection of 'confusing similarity' -- REGIS
contains strong conceptual similarities -- Court concluded the marks were not likely to
be confused as St Regis in Singapore known for exclusivity and reputation for luxury -average consumer possess a greater level of awareness and sophistication.
Subject: Trade mark infringement--hospitality industry--Singapore
Subject: Famous trade marks--Singapore
SNIPER No.: 2013/01285
Title: A simpler solution
Source: World Intellectual Property Review. March-April 2013, pp. 26-31.
Summary: Gerard Pannekoek, president and chief executive of Intellectual Property
Exchange International (IPXI) -- patent litigation is eating away at research and
development budgets -- financially crippling smaller players -- possible solution -- IPXI is
the world's first financial exchange for licensing and trading intellectual property (IP)
rights using market based pricing and "standardised terms" -- trades in Unit License
Right contracts (ULR) -- non-exclusive right to use a patented technology for one
instance -- why it will encourage innovation and reduce patent litigation.
Subject: Intellectual property licensing
Subject: Trade
SNIPER No.: 2013/01809
Author: Mirandah, Gladys
Title: Singapore amends Patent Rules, effective date to be confirmed
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 3, March 2013, pp. 50.
Summary: Intellectual Property Office of Singapore (IPOS) released draft amendments
to the Singapore Patents Rules -- move from the self-assessment system to the positive
grant systems -- new integrated registries IT system -- contentious proceedings before
the Registrar -- amendments applicable to all actions regardless of whether they were
initiated prior to the effective date of the amendments.
Subject: Patent systems--reform--Singapore
SNIPER No.: 2013/02013
Author: Davis, Theodore H.
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Title: The sixty-fifth year of administration of the U.S. Trademark (Lanham) Act of 1946:
introduction
Source: Trademark Reporter. Vol. 103 No. 1, 2013, pp. 1-6.
General Note: First article in a series of sixteen. See also: 2013/02014; 2013/02015;
2013/02016; 2013/02017; 2013/02018; 2013/02019; 2013/02020; 2013/02021;
2013/02022; 2013/02023; 2013/02024; 2013/02025; 2013/02026; 2013/02027;
2013/02028.
Summary: United States trade mark law -- year in review 1 July 2011 to 30 June 2012 - significant opinions -- writ of certiorari in trade mark case issued for the first time in
nearly a decade -- fine line between aesthetic functionality and utilitarian functionality -trade dress protection -- liability determinations -- dilution -- transgressions of
substantive and technical rules -- bona fide intent to use mark
Subject: Trade marks--case law--United States
SNIPER No.: 2013/02016
Author: Davis, Theodore H.
Title: The sixty-fifth year of administration of the U.S. Trademark (Lanham) Act of 1946
(part 3A): trademark infringement and unfair competition in the courts of general
jurisdiction: establishing protectable trademark and service mark rights
Source: Trademark Reporter. Vol. 103 No. 1, 2013, pp. 94-132.
General Note: Fourth article in a series of sixteen. See also: 2013/02013; 2013/02014;
2013/02015; 2013/02017; 2013/02018; 2013/02019; 2013/02020; 2013/02021;
2013/02022; 2013/02023; 2013/02024; 2013/02025; 2013/02026; 2013/02027;
2013/02028.
Summary: United States trade mark law -- year in review 1 July 2011 to 30 June 2012 - mark validity -- use in commerce -- distinctiveness -- nonfunctionality
Subject: Trade marks--case law--United States
SNIPER No.: 2013/02017
Author: Davis, Theodore H.
Title: The sixty-fifth year of administration of the U.S. Trademark (Lanham) Act of 1946
(part 3B): trademark infringement and unfair competition in the courts of general
jurisdiction: establishing liability
Source: Trademark Reporter. Vol. 103 No. 1, 2013, pp. 132-260.
General Note: Fifth article in a series of sixteen. See also: 2013/02013; 2013/02014;
2013/02015; 2013/02016; 2013/02018; 2013/02019; 2013/02020; 2013/02021;
2013/02022; 2013/02023; 2013/02024; 2013/02025; 2013/02026; 2013/02027;
2013/02028.
Summary: United States trade mark law -- year in review 1 July 2011 to 30 June 2012 - liability -- proving actionable uses in commerce by defendants -- proving likelihood of
confusion -- findings and holdings -- exhaustion of rights and diverted goods -- survey
evidence of confusion -- effect of disclaimers -- counterfeiting -- dilution -- passing-off
and reverse passing-off -- false endorsement -- false advertising -- cybersquatting -fraudulent procurement of registrations -- state and common-law claims -- right of
publicity -- secondary liability -- contributory infringement and vicarious liability -personal liability
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Subject: Trade marks--case law--United States
SNIPER No.: 2013/02018
Author: Davis, Theodore H.
Title: The sixty-fifth year of administration of the U.S. Trademark (Lanham) Act of 1946
(part 3C): trademark infringement and unfair competition in the courts of general
jurisdiction: defenses
Source: Trademark Reporter. Vol. 103 No. 1, 2013, pp. 260--280.
General Note: Sixth article in a series of sixteen. See also: 2013/02013; 2013/02014;
2013/02015; 2013/02016; 2013/02017; 2013/02019; 2013/02020; 2013/02021;
2013/02022; 2013/02023; 2013/02024; 2013/02025; 2013/02026; 2013/02027;
2013/02028.
Summary: United States trade mark law -- year in review 1 July 2011 to 30 June 2012 - legal defences -- abandonment -- non-use -- naked licensing -- descriptive fair use -nominative fair use -- innocent printer -- equitable defences -- unclean hands -- laches -acquiescence -- estoppel
Subject: Trade marks--case law--United States
SNIPER No.: 2013/02019
Author: Davis, Theodore H.
Title: The sixty-fifth year of administration of the U.S. Trademark (Lanham) Act of 1946
(part 3D): trademark infringement and unfair competition in the courts of general
jurisdiction: remedies
Source: Trademark Reporter. Vol. 103 No. 1, 2013, pp. 280--328.
General Note: Seventh article in a series of sixteen. See also: 2013/02013;
2013/02014; 2013/02015; 2013/02016; 2013/02017; 2013/02018; 2013/02020;
2013/02021; 2013/02022; 2013/02023; 2013/02024; 2013/02025; 2013/02026;
2013/02027; 2013/02028.
Summary: United States trade mark law -- year in review 1 July 2011 to 30 June 2012 - infringement remedies -- injunctive relief -- preliminary and permanent injunctions -monetary relief -- actual and statutory damages -- punitive damages -- accountings of
profits -- attorneys' fees -- taxation of costs
Subject: Trade marks--case law--United States
SNIPER No.: 2013/02020
Author: Davis, Theodore H.
Title: The sixty-fifth year of administration of the U.S. Trademark (Lanham) Act of 1946
(part 3E): trademark infringement and unfair competition in the courts of general
jurisdiction: relationship between Courts and the United States Patent and Trademark
Office
Source: Trademark Reporter. Vol. 103 No. 1, 2013, pp. 328-337.
General Note: Eighth article in a series of sixteen. See also: 2013/02013; 2013/02014;
2013/02015; 2013/02016; 2013/02017; 2013/02018; 2013/02019; 2013/02021;
2013/02022; 2013/02023; 2013/02024; 2013/02025; 2013/02026; 2013/02027;
2013/02028.
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Summary: United States trade mark law -- year in review 1 July 2011 to 30 June 2012 - Court review of USPTO decisions -- deference to USPTO decisions -- judicial authority
over federal registrations and applications
Subject: Trade marks--case law--United States
SNIPER No.: 2013/02021
Author: Davis, Theodore H.
Title: The sixty-fifth year of administration of the U.S. Trademark (Lanham) Act of 1946
(part 3F): trademark infringement and unfair competition in the courts of general
jurisdiction: constitutional matters
Source: Trademark Reporter. Vol. 103 No. 1, 2013, pp. 337-344.
General Note: Ninth article in a series of sixteen. See also: 2013/02013; 2013/02014;
2013/02015; 2013/02016; 2013/02017; 2013/02018; 2013/02019; 2013/02020;
2013/02022; 2013/02023; 2013/02024; 2013/02025; 2013/02026; 2013/02027;
2013/02028.
Summary: United States trade mark law -- year in review 1 July 2011 to 30 June 2012 - constitutional issues -- First Amendment Right to Free Expression -- First Amendment
Right to Petition -- Seventh Amendment -- Eleventh Amendment.
Subject: Trade marks--case law--United States
SNIPER No.: 2013/02022
Author: Davis, Theodore H.
Title: The sixty-fifth year of administration of the U.S. Trademark (Lanham) Act of 1946
(part 3G): trademark infringement and unfair competition in the courts of general
jurisdiction: procedural matters
Source: Trademark Reporter. Vol. 103 No. 1, 2013, pp. 345-385.
General Note: Tenth article in a series of sixteen. See also: 2013/02013; 2013/02014;
2013/02015; 2013/02016; 2013/02017; 2013/02018; 2013/02019; 2013/02020;
2013/02021; 2013/02023; 2013/02024; 2013/02025; 2013/02026; 2013/02027;
2013/02028.
Summary: United States trade mark law -- year in review 1 July 2011 to 30 June 2012 - procedural issues -- declaratory judgment actions -- standing -- subject-matter and
personal jurisdiction -- venue -- class certification -- claim preclusion (res judicata) and
issue preclusion (collateral estoppel) -- judicial estoppel -- extraterritorial application of
the Lanham Act -- expert witness testimony -- judicial disqualification -- sanctions.
Subject: Trade marks--case law--United States
SNIPER No.: 2013/02023
Author: Davis, Theodore H.
Title: The sixty-fifth year of administration of the U.S. Trademark (Lanham) Act of 1946
(part 3H): trademark infringement and unfair competition in the courts of general
jurisdiction: evidentiary matters
Source: Trademark Reporter. Vol. 103 No. 1, 2013, pp. 385-387.
General Note: Eleventh article in a series of sixteen. See also: 2013/02013;
2013/02014; 2013/02015; 2013/02016; 2013/02017; 2013/02018; 2013/02019;
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2013/02020; 2013/02021; 2013/02022; 2013/02024; 2013/02025; 2013/02026;
2013/02027; 2013/02028.
Summary: United States trade mark law -- year in review 1 July 2011 to 30 June 2012 - evidentiary matters -- whether anecdotal evidence of actual confusion consists of
inadmissible hearsay -- extent to which materials submitted by the defendant were the
subject of judicial notice -- evidentiary value
Subject: Trade marks--case law--United States
SNIPER No.: 2013/02024
Author: Davis, Theodore H.
Title: The sixty-fifth year of administration of the U.S. Trademark (Lanham) Act of 1946
(part 3I): trademark infringement and unfair competition in the courts of general
jurisdiction: discovery-related matters
Source: Trademark Reporter. Vol. 103 No. 1, 2013, pp. 387-389.
General Note: Twelfth article in a series of sixteen. See also: 2013/02013;
2013/02014; 2013/02015; 2013/02016; 2013/02017; 2013/02018; 2013/02019;
2013/02020; 2013/02021; 2013/02022; 2013/02023; 2013/02025; 2013/02026;
2013/02027; 2013/02028.
Summary: United States trade mark law -- year in review 1 July 2011 to 30 June 2012 - discovery-related issues -- motions to compel -- extraterritorial activities -- records
maintained outside the United States -- confidential information
Subject: Trade marks--case law--United States
SNIPER No.: 2013/02025
Author: Davis, Theodore H.
Title: The sixty-fifth year of administration of the U.S. Trademark (Lanham) Act of 1946
(part 3J): trademark infringement and unfair competition in the courts of general
jurisdiction: trademark-related contracts
Source: Trademark Reporter. Vol. 103 No. 1, 2013, pp. 390-396.
General Note: Thirteenth article in a series of sixteen. See also: 2013/02013;
2013/02014; 2013/02015; 2013/02016; 2013/02017; 2013/02018; 2013/02019;
2013/02020; 2013/02021; 2013/02022; 2013/02023; 2013/02024; 2013/02026;
2013/02027; 2013/02028.
Summary: United States trade mark law -- year in review 1 July 2011 to 30 June 2012 - trade mark-related contracts -- interpretation and enforcement of settlement
agreements -- interpretation of trade mark assignments and licences -- interpretation of
real estate leases
Subject: Trade marks--case law--United States
SNIPER No.: 2013/02026
Author: Davis, Theodore H.
Title: The sixty-fifth year of administration of the U.S. Trademark (Lanham) Act of 1946
(part 3K): trademark infringement and unfair competition in the courts of general
jurisdiction: trademark-related bankruptcy issues
Source: Trademark Reporter. Vol. 103 No. 1, 2013, pp. 396-398.
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General Note: Fourteenth article in a series of sixteen. See also: 2013/02013;
2013/02014; 2013/02015; 2013/02016; 2013/02017; 2013/02018; 2013/02019;
2013/02020; 2013/02021; 2013/02022; 2013/02023; 2013/02024; 2013/02025;
2013/02027; 2013/02028.
Summary: United States trade mark law -- year in review 1 July 2011 to 30 June 2012 - bankruptcy issues related to trade marks -- interpretation of licence --trade marks not
included in definition of intellectual property in Bankruptcy Code -- breach of contract -continued use of mark.
Subject: Trade marks--case law--United States
SNIPER No.: 2013/02027
Author: Davis, Theodore H.
Title: The sixty-fifth year of administration of the U.S. Trademark (Lanham) Act of 1946
(part 3L): the relationship between the Lanham Act and the Federal Food, Drug and
Cosmetic Act
Source: Trademark Reporter. Vol. 103 No. 1, 2013, pp. 398-399.
General Note: Fifteenth article in a series of sixteen. See also: 2013/02013;
2013/02014; 2013/02015; 2013/02016; 2013/02017; 2013/02018; 2013/02019;
2013/02020; 2013/02021; 2013/02022; 2013/02023; 2013/02024; 2013/02025;
2013/02026; 2013/02028.
Summary: United States trade mark law -- year in review 1 July 2011 to 30 June 2012 - relationship between the Lanham Act and the administration by the Food and Drug
Administration (FDA) of the Federal Food, Drug, and Cosmetic Act (FDCA) -- false
advertising lawsuits in the food and beverage industries -- FDCA limits claims under the
Lanham Act -- doctrinal rules -- product labelling
Subject: Trade marks--case law--United States
SNIPER No.: 2013/02028
Author: Davis, Theodore H.
Title: The sixty-fifth year of administration of the U.S. Trademark (Lanham) Act of 1946
(part 3M): insurance coverage
Source: Trademark Reporter. Vol. 103 No. 1, 2013, pp. 399-407.
General Note: Sixteenth article in a series of sixteen. See also: 2013/02013;
2013/02014; 2013/02015; 2013/02016; 2013/02017; 2013/02018; 2013/02019;
2013/02020; 2013/02021; 2013/02022; 2013/02023; 2013/02024; 2013/02025;
2013/02026; 2013/02027.
Summary: United States trade mark law -- year in review 1 July 2011 to 30 June 2012 - insurance coverage -- cases ordering coverage -- cases declining to order coverage
Subject: Trade marks--case law--United States
SNIPER No.: 2013/02014
Author: Welch, John L.
Title: The sixty-fifth year of administration of the U.S. Trademark (Lanham) Act of 1946
(part 1): ex-parte cases
Source: Trademark Reporter. Vol. 103 No. 1, 2013, pp. 7- 37.
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General Note: Second article in a series of sixteen. See also: 2013/02013;
2013/02015; 2013/02016; 2013/02017; 2013/02018; 2013/02019; 2013/02020;
2013/02021; 2013/02022; 2013/02023; 2013/02024; 2013/02025; 2013/02026;
2013/02027; 2013/02028.
Summary: United States trade mark law -- year in review 1 July 2011 to 30 June 2012 - likelihood of confusion -- mere descriptiveness -- functionality -- immoral or scandalous
marks -- official governmental insignia -- primarily geographically deceptively
misdescriptive -- acquired distinctiveness -- genericness -- failure to function -- goods in
trade -- collateral estoppel
Subject: Trade marks--case law--United States
SNIPER No.: 2013/02015
Author: Welch, John L.
Title: The sixty-fifth year of administration of the U.S. Trademark (Lanham) Act of 1946
(part 2): inter-parte cases
Source: Trademark Reporter. Vol. 103 No. 1, 2013, pp. 37- 94.
General Note: Third article in a series of sixteen. See also: 2013/02013; 2013/02014;
2013/02016; 2013/02017; 2013/02018; 2013/02019; 2013/02020; 2013/02021;
2013/02022; 2013/02023; 2013/02024; 2013/02025; 2013/02026; 2013/02027;
2013/02028.
Summary: United States trade mark law -- year in review 1 July 2011 to 30 June 2012 - likelihood of confusion -- acquired descriptiveness -- dilution by blurring -- discovery
sanctions -- primarily geographically deceptively misdescriptive -- non-use -- lack of
bona fide intent -- functionality -- defective Section 44 basis -- concurrent use -certification mark validity -- title of single creative work -- procedural issues -- motion
practice
Subject: Trade marks--case law--United States
SNIPER No.: 2013/01931
Author: Masnick, Michael
Added author: Computer & Communications Industry Association (U.S.)
Added author: EngineAdvocacy
Added author: Floor64 (Firm)
Title: The sky is rising: a detailed look at the state of the entertainment industry
Source: The Sky is Rising. January 2012
General Note: First report in a series of two. See also: 2013/01932.
Summary: Effect of the internet on the entertainment industry -- claims of negative
effects not supported by evidence -- copyright infringement -- piracy -- video market -book publishing market -- music market -- video game market.
Subject: Internet--culture and entertainment industry
Subject: Copyright--culture and entertainment industry
Subject: Piracy--culture and entertainment industry
Subject: Profit and loss--culture and entertainment industry
Subject: Culture and entertainment industry--trends
SNIPER No.: 2013/01932
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Author: Masnick, Michael
Added author: Computer & Communications Industry Association (U.S.)
Added author: Floor64 (Firm)
Title: The sky is rising: regional study
Source: The Sky is Rising. 2013
General Note: Second report in a series of two. See also: 2013/01931.
Summary: Effect of the internet on the entertainment industry -- claims of negative
effects not supported by evidence -- copyright infringement -- piracy -- video market -book publishing market -- music market -- video game market -- Germany -- France -United Kingdom -- Italy -- Russia -- Spain.
Subject: Internet--culture and entertainment industry
Subject: Copyright--culture and entertainment industry
Subject: Piracy--culture and entertainment industry
Subject: Profit and loss--culture and entertainment industry
Subject: Culture and entertainment industry--trends--Germany
Subject: Culture and entertainment industry--trends--France
Subject: Culture and entertainment industry--trends--United Kingdom
Subject: Culture and entertainment industry--trends--Italy
Subject: Culture and entertainment industry--trends--Russia
Subject: Culture and entertainment industry--trends--Spain
SNIPER No.: 2013/01756
Author: Roe, Ted
Title: Slaying the troll
Source: Intellectual Property Magazine. July-August 2013, pp. 64-66.
Summary: United States District Court of Oregon -- Voltage Pictures v Does -- what is
a copyright troll? -- copyright trolls try to grow businesses out of suing internet users -statutory penalty -- legal doctrine of 'secondary liability' -- lawsuits aimed at dozens or
thousands of "John Doe" internet account holders -- modern troll history -- structure of a
troll lawsuit -- coercion, extortion and intimidation -- troll lawsuits, not just for porn
anymore.
Subject: Copyright enforcement--United States
Subject: Copyright infringement--case law--United States
SNIPER No.: 2013/01736
Author: Johnson, Alan
Title: So close, yet so far
Source: Intellectual Property Magazine. July-August 2013, pp. 19-20.
Summary: When the Unified Patent Court (UPC) might be open for business -- list of
tasks to be completed -- political issues -- technical and legal issues -- practical issues.
Subject: Harmonisation of laws--Europe
Subject: Patents--reform--Europe
SNIPER No.: 2013/01941
Author: Sharples, Andrew
Title: So when is a patent claim too broad?
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Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 8, August 2013,
pp. 578-580.
Summary: Broad claims allowed by appeal court ruling as scope of claims justified by
invention -- Regeneron Pharmaceuticals Inc v Genentech Inc -- therapeutic agents for
treatment of angiogenesis or neovascularization -- claimants product for the treatment
of age-related macular degeneration -- 'Eylea' -- attempt to revoke patent -- main
disputed claim -- common general knowledge -- infringement -- lack of novelty and
inventive step -- claimant sought to claim insufficiency -- court of first instance rejected
claimants' arguments -- Court of Appeal agreed with earlier decision -- significance of
decision.
Subject: Patent validity--case law--United Kingdom
Subject: Patent claims--case law--United Kingdom
SNIPER No.: 2013/01820
Author: Jitmongkolthong, Sukontip
Title: Southeast Asia
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
53-59.
Summary: Combined economies of Association of Southeast Asian Nations (ASEAN)
ranks as the ninth largest in the world -- ASEAN Economic Community (AEC) set to be
realised in 2015 -- guide to anti-counterfeiting in Thailand and its neighbouring emerging
markets: Cambodia, Laos and Myanmar -- legal framework -- border measures -criminal prosecution -- civil enforcement -- anti-counterfeiting online -- preventive
measures / strategies.
Subject: Counterfeiting--Southeast Asia
Subject: Intellectual property enforcement--Southeast Asia
SNIPER No.: 2013/01744
Author: Sachs, Heidi L.
Title: Spoonful of rigour
Source: Intellectual Property Magazine. July-August 2013, p. 38.
Summary: Report to Congress from the Office of the National Counterintelligence
Executive -- pharmaceutical industry is greatest interest to thieves of United States
trade secrets -- new criminal laws underscore the value of trade secrets -- The theft of
Trade Secrets Clarification Act (TSCA) -- Foreign Economic Espionage Penalty
Enhancement Act (FEEPEA) -- increased the criminal penalties for stealing trade
secrets -- highlight Congress's commitment to protecting US intellectual property (IP) -recent cases -- best practices for protecting trade secrets.
Subject: Trade secrets
Subject: Criminal law--United States
SNIPER No.: 2013/01792
Author: Wild, Joff
Title: Star man
Source: Intellectual Asset Management. No. 60, July/August 2013, pp. 63-70.
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Summary: Interview with John Veschi, CEO, Rockstar -- non-practising entities (NPEs)
-- intellectual property monetisation -- intellectual property licensing -- Nortel patents -Nortel technology and R&D team -- sale commitments to U.S. Department of Justice -patent mining.
Subject: Veschi, John--interviews
Subject: Patent licensing--information technology industry--United States
Subject: Competition (Economics)--information technology industry--United States
Subject: Patent trolls--information technology industry--United States
SNIPER No.: 2013/01740
Author: Mole, Laura
Title: Stem cell
Source: Intellectual Property Magazine. July-August 2013, pp. 28-29.
Summary: Patent law and the Biotechnology Directive -- Article 6(2)(c) excludes
patentability for inventions which use human embryos for industrial or commercial
purposes -- the Brüstle case -- stem cells and patents -- International Stem Cell
Corporation (ISCC) v Comptroller General of Patents -- potential of stem cells -- bar to
patentability -- what can be done?
Subject: Research on life forms
Subject: Harmonisation of laws
SNIPER No.: 2013/00153
Author: Graber, Christoph Beat
Title: Stimulating trade and development of indigenous cultural heritage by means of
international law: issues of legitimacy and method
Source: Graber, Christoph B., et al. (eds.), International trade in indigenous cultural
heritage: legal and policy issues. Cheltenham, U.K.: Edward Elgar, 2012. pp. 3-30.
Summary: Problems related to legitimacy and method -- issues related to the
international law's potential in stimulating indigenous cultural heritage (ICH) trade for the
sake of indigenous social and economic development -- how interests of indigenous
peoples in trade and development of ICH are currently institutionalised in international
economic law -- whether preferential trade rules for indigenous cultural goods and
services would be an adequate tool to advance the interests of indigenous peoples in
ICH trade and development.
Subject: Traditional cultural expressions
Subject: Traditional knowledge
Subject: International trade
SNIPER No.: 2013/01763
Author: Morris, James H.
Title: Striking the right balance
Source: Intellectual Property Magazine. July-August 2013, pp. 84-85.
Summary: Leahy- Smith America Invents Act (AIA) -- United States became a 'first-tofile' system -- AIA dramatically increases the scope of what constitutes prior art to a
patent application -- exception to the prior art definition under the AIA is common
ownership -- companies should establish internal procedures to identify inventions early
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and not delay filings -- AIA established a new way to influence competitors' patent
prosecution -- third party submissions -- a new mechanism for a patent owner to correct
defects in the prosecution of a patent that may render the patent unenforceable.
Subject: Patent systems--reform--United States
Subject: Intellectual property rights--United States
SNIPER No.: 2013/01789
Author: Hall, Bronwyn H.
Added author: UK Intellectual Property Office
Added author: National Institute of Economic and Social Research
Title: A study of patent thickets
Source: A Study of Patent Thickets. July 2013.
General Note: This is an independent report commissioned by the Intellectual Property
Office (IPO), in conjunction with the National Institute of Economic and Social Research.
Summary: Analyses whether entry of UK enterprises into patenting in a technology
area is affected by patent thickets in the technology area -- role of patent thickets as a
barrier for small and medium enterprises (SME's) -- literature review on patent thickets - R&D investments and competition -- discussion of the factors contributing to thicket
formation and growth.
Subject: Patent applications--manufacturing and processing industry--United Kingdom
Subject: Small and medium enterprises--United Kingdom
Subject: Value of intellectual property
SNIPER No.: 2013/01819
Author: Meiring, Wayne
Title: Sub-Saharan Africa
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
48-52.
Summary: Africa's overall economic growth rate -- Africa will have the fastest-growing
economy of any continent over the next five years -- anti-counterfeiting measures and
developments in Nigeria, Kenya and Mauritius -- Nigeria -- civil remedies -- urgent
interim relief -- Kenya -- Anti-counterfeiting Act -- purpose of the act -- functioning of the
act -- lodging a complaint -- recent case law -- Mauritius.
Subject: Counterfeiting--Africa, Sub-Saharan
Subject: Intellectual property enforcement--Africa, Sub-Saharan
SNIPER No.: 2013/01781
Author: Pollock, Robert A.
Title: Supreme Court Myriad decision reverses decades of USPTO practice
Source: World Intellectual Property Report. Vol. 27 No. 7, July 2013, pp. 44-45.
Summary: US Supreme Court decision in Association of Molecular Pathology v, Myriad
Genetics Inc. -- found that claims to naturally occurring BRCA gene sequences are
products of nature -- not eligible for patent protection -- also held that man-made cDNA
that differs from the native form is patent eligible -- Court rejected Myriad's argument
that it should defer to the USPTO's practice of awarding gene patents -- impact of the
decision -- mixed result for biotechnology industry.
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Subject: Gene sequences--patentability--United States
Subject: Patenting of life forms--case law--United States
SNIPER No.: 2013/01650
Author: Handig, Christian
Title: The "sweat of the brow" is not enough!: more than a blueprint of the European
copyright term "work"
Source: European Intellectual Property Review. Vol. 35 No. 6, 2013, pp. 309-317.
Summary: Court of Justice of the European Union clarified some important aspects of
the term "copyright work" -- interpreted uniformly -- expressing "free and creative
choices" in the production of a work -- products of "labour, skills or effort" lacking the
authors "personal touch" will no longer receive copyright protection -- single European
level of harmonisation -- international law -- high premises -- unprotectable or
copyrightable -- immoral and illegal works -- consequences for the Copyright, Designs
and Patents Act 1988 (CDPA 1988).
Subject: Copyright--law and legislation--Europe
Subject: Copyright--harmonisation--Europe
SNIPER No.: 2013/01971
Author: Chang, Roger
Title: Taiwan Fair Trade Commission's changing stance towards patent pools
Source: World Intellectual Property Report. Vol. 27 No. 8, August 2013, pp. 43-45.
Summary: Patent pools -- multiple patent owners contribute essential patents for
manufacturing of certain products and grant an all-in-one licence -- fair Trade
Commission (FTC), Taiwanese competition authority -- established objective and
predictable procedures and standards of examination for handling applications related
to patent pools -- independent expert review to determine the essentiality of the licensed
patents -- openness of the pool to all patent owners possessing relevant essential
patents -- regular culling of obsolete or invalid patents from the pool -- confidential
information should not be exchanged between licensors in patent pool -- measures will
encourage patent pools in Taiwan
Subject: Patent pools--Taiwan
Subject: Competition (Economics)--Taiwan
Subject: Patent licensing--Taiwan
SNIPER No.: 2013/01737
Author: McCabe, Justin
Title: Taking aim
Source: Intellectual Property Magazine. July-August 2013, p. 22.
Summary: Vermont attorney general (AG) sued MPHJ Technology Investments
(MPHJ) -- notorious patent assertion entity (PAE) -- claims to own the patent rights to a
process of scanning documents and sending them via email over a network -- AG
contends MPHJ's demand letters were false, deceptive, and misleading -- difficult to
assess the probable success of the AG's suit -- AG will have to show the suit is not
preempted under federal law and/or the First Amendment -- Federal Circuit's prior
holdings that proof of infringement is not required before a patentee can asserts its
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rights -- Federal Circuit's finding that bad faith is supported when the information is
objectively inaccurate -- substantial ramifications on state activities to curb patent troll
activities.
Subject: Patent trolls--United States
Subject: Patent litigation--United States
SNIPER No.: 2013/01089
Author: Cardoso, Arturo
Title: Ten years of the linkage system
Source: World Intellectual Property Review. January-February 2013, p. 62.
Review: Linkage system -- an exchange information system between the Federal
Commission for Protection against Health Risks (COFEPRIS) and the Mexican Institute
of Industrial Property (IMPI) -- Health Law Regulations (RIS) -- establishes some
guidelines for regulating the exchange of information -- peculiarities related to its
application and interpretation -- Linkage Gazette published by IMPI contains information
on the active ingredients covered by a patent right -- basic tool for the exchange of
information between the COFEPRIS and IMPI -- Gazette is not acceptable as proof that
the health registration applied for does not invade a patent -- necessary that COFEPRIS
and IMPI work more closely to define the type of information contained in the Gazette to
include information that can be truly useful for both authorities.
Subject: Patent rights--Mexico
Subject: Pharmaceuticals--Mexico
SNIPER No.: 2013/01522
Author: Freeman, Iain
Title: Tendency evidence of copyright infringing conduct: Aristocrat Technologies
Australia Pty Ltd v Allam
Source: Australian Intellectual Property Law Bulletin. Vol. 26 No. 1, July 2013, pp. 1517.
Summary: Aristocrat Technologies Australia Pty Ltd v Global Gaming Supplies Pty Ltd;
Aristocrat Technologies Australia Pty Ltd v Allam -- High Court considered an
application by Aristocrat Technologies Australia and related companies for special leave
to appeal a decision of the Full Federal Court (FCAFC) -- key issue in the earlier
proceedings was whether the Aristocrat Companies' copyright had been infringed -after a finding that its rights were not infringed, Aristocrat Companies sought special
leave to appeal, challenging the FCAFC's treatment of "tendency evidence" and s. 87
of the Evidence Act 1997 -- High Court refused special leave -- published its reasons -provided an exposition of the principles relevant to the admissibility of evidence of a
tendency to engage in infringing conduct.
Subject: Copyright infringement--case law--Australia
Subject: Evidence--Australia
SNIPER No.: 2013/01961
Author: Romandini, Roberto
Title: The territoriality principle and transnational use of patented inventions: the wider
reach of a Unitary Patent and the role of the CJEU
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Source: IIC : International Review of Intellectual Property and Competition Law. Vol. 44
No. 5, August 2013, pp. 524-540.
Summary: Cross-border use of patented inventions -- example of telecommunications
and diagnostic methods -- assessment of infringement on the basis of a bundle of
national patents -- assessment of infringement based on the future Unitary Patent -- role
of the Court of Justice of the European Union (CJEU) -- questions related to
interpretation of Art. 28(1) of the Trade-Related Aspects of Intellectual Property Rights
(TRIPS) Agreement must be referred to the CJEU
Subject: Regional patents--Europe
Subject: Patent infringement--Europe
Subject: Legal jurisdiction--Europe
SNIPER No.: 2013/01091
Author: Delion, Lilie C.
Title: Test data protection
Source: World Intellectual Property Review. January-February 2013, p. 64.
Review: Data test protection -- constituted by information resulting from tests
conducted with a novel molecule, which have determined the efficacy and safety of it -Legislative Decree No. 1072 provides for the protection of data tests in the registration
process of a new chemical entity (NCE) -- what cases will not be considered to be
NCEs -- commercialisation of products such as food and cosmetic products is subject to
regulation by the state -- competent authority issues a health permit based on the filing
of certain information which describes the product -- case of agrichemicals.
Subject: Data exclusivity--pharmaceutical industry--Peru
Subject: Data exclusivity--biotechnology industry--Peru
SNIPER No.: 2013/00230
Author: Lu, Jianfeng
Title: Theory for interpreting means-plus-function features and its development driven
by judicial practice
Source: China Patents and Trademarks. Vol. 111 No. 4 October 2012, pp. 22-26.
Summary: Two standards for interpreting means-plus-function features in China -establishment of "based-on-embodiment-and-equivalent" standard -- "based-onembodiment-and-equivalent" standard in undecided state -- applying both standards of
all function-performing embodiments.
Subject: Patent examination--China
Subject: Patent claims--China
SNIPER No.: 2013/01969
Author: Hughes, Karen
Title: "Thinking in the box": shaping corporate strategies to benefit from UK Patent Box
or Dutch Innovation Box
Source: World Intellectual Property Report. Vol. 27 No. 8, August 2013, pp. 39-41.
Summary: Tax schemes to encourage investment and growth -- overview of UK and
Dutch regimes -- similarities and key differences -- qualifying companies -- scope of
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calculation of IP profits and losses -- structuring opportunities within the Dutch
Innovation Box -- structuring opportunities within the UK Patent Box -- questions for
businesses to consider -- need to revisit existing IP strategies to optimise tax position
Subject: Business taxation--United Kingdom
Subject: Business taxation--Netherlands
Subject: Intellectual property management--United Kingdom
Subject: Intellectual property management--Netherlands
SNIPER No.: 2013/01731
Author: Aziz, Khurram
Title: Three strikes and you're out?
Source: Intellectual Property Magazine. July-August 2013, p. 10.
Summary: Digital Economy Act (DEA) -- designed to safeguard United Kingdom's
cultural industry -- provisions to penalise illegal file-sharers -- delays to the scheme -disagreements over who will pay for the three-strikes system -- similar legislation in
France -- what the measures would entail has remained the subject of intense legal
debate and political wrangling -- Internet Service Providers' Association's (ISPA)
response to the delays -- in France the three-strikes legislation is close to being
reversed -- too expensive and has failed to deter infringement -- other countries have
implemented a graduated response to internet piracy -- copyright owners, internet
service providers and the courts have implemented their own solutions.
Subject: Piracy--United Kingdom
Subject: Electronic copyright--law and legislation--United Kingdom
SNIPER No.: 2013/01759
Author: Casucci, Giovanni F.
Title: Through the looking glass
Source: Intellectual Property Magazine. July-August 2013, pp. 72-73.
Summary: The Milan District Court -- Prada v Nau --Prada's 'Postcards' sunglasses
protected by an unregistered Community design -- 'Lollipop' model offered by Nau,
infringed Prada's design rights -- court granted claims based on unfair competition by
parasitism in relation to four additional models -- the underlying conflict -- the various
defences -- finding infringement of unregistered Community design right -- finding unfair
competition to the detriment of Prada -- lessons from Prada v Nau.
Subject: Industrial design infringement--fashion and design industry--Italy
Subject: Competition (Economics)--Italy
SNIPER No.: 2013/01854
Author: Davies, Colin
Title: To buy or not to buy: the use of a trade mark as a communication tool rather than
as a link between a product and it's source : a further consideration of the concept of
dilution
Source: European Intellectual Property Review. Vol. 35 No. 7, 2013, pp. 373-382.
Summary: Concept of dilution substantially restricted following the introduction in the
case of Intel Corp Inc v CPM UK Ltd -- Trade Mark Directive 89/104 -- demonstrate a
change in the average consumer's economic behaviour -- rationale behind the
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introduction -- questions the basis of the General Court's subsequent interpretation of
Intel in the case of Environmental Manufacturing LLP v OHIM -- meaning of dilution -history -- Court of Appeal -- Electrocoin case -- A.G. Sharptston's ECJ opinion -rebuttable presumption v evidence of change.
Subject: Trade mark dilution--case law--Europe
SNIPER No.: 2013/01866
Author: Pathi, Devita
Title: To register or not to register?: it is all a matter of design: unregistered design
rights in Australia
Source: Australian Intellectual Property Law Bulletin. Vol. 26 No. 2, August 2013, pp.
35-37.
Summary: Enforcing design protection in Australia requires obtaining registration and
certification of the design -- there is no protection for unregistered designs -- the
registration system does not adequately meet the needs of some industries -- system is
different from that in the European Union -- which provides a short-term period of
protection for unregistered designs -- available to overseas parties, including Australian
designers who release products in Europe -- parties have relied on other avenues -trade marks and consumer law -- mixed results.
Subject: Industrial design rights--Australia
Subject: Industrial designs--case law--Australia
SNIPER No.: 2013/01647
Author: Stone, David
Title: To stay or not to stay, that is the question?: when do "special grounds" apply to
prevent an infringement court staying proceedings if the CTM or RCD relied on has
been challenged elsewhere?
Source: European Intellectual Property Review. Vol. 35 No. 6, 2013, pp. 309-317.
Summary: Stay provisions of European Union-wide intellectual property legislation -motives behind and interpretation of Article 104(1) of the CTM Regulation and article 91
(1) of the Designs Regulation by the courts of the United Kingdom and elsewhere -current interpretation of special grounds favours infringers -- a consistent and looser
interpretation of the provisions is needed throughout the EU -- purpose behind the stay
provisions -- early case law in and outside of England and Wales -- Samsung v Apple
case -- EMI, Starbucks v BSkyB -- BSkyB in the Court of Appeal -- cases since BSkyB
decision -- objective of the legislation is to enable a system of uniform protection of
Community rights throughout the EU.
Subject: Community trade mark
Subject: European Parliament. Regulation (EC) No 207/2009 of 26 February 2009 on
the Community trade mark
Subject: European Parliament. Regulation (EC) No 6/2002 of 12 December 2001 on
Community designs
Subject: Trade mark infringement--case law--Europe
SNIPER No.: 2013/01801
Author: Glass, Gregory
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Title: Toe Su Aung: global citizen
Source: Asia IP: Protecting your Intellectual Assets. Vol. 5 No. 4, April 2013, pp. 42-43.
Summary: Interview with president of INTA (International Trademark Association) Toe
Su Aung -- promoting IP -- importance of intellectual property -- rise of Asia -- career
highlights -- networking opportunities -- promoting the role of INTA -- committee and
large-scale conference involvement.
Subject: International Trademark Association
Subject: Trade marks--Asia
Subject: Intellectual property management--Asia
SNIPER No.: 2013/00169
Author: Graber, Christoph Beat
Title: The trade and development of indigenous cultural heritage: completing the picture
and a possible way forward
Source: Graber, Christoph B., et al. (eds.), International trade in indigenous cultural
heritage: legal and policy issues. Cheltenham, U.K.: Edward Elgar, 2012. pp. 463-493.
Summary: Research project endeavouring to explore how trade and development of
indigenous cultural heritage (ICH) could be stimulated by the means of international law
-- three-day workshop that took place at the University of Lucerne in January 2011 -major points of agreement and disagreement among participants of the workshop -prospective directions for further research.
Subject: Traditional cultural expressions
Subject: Trade
SNIPER No.: 2013/01405
Author: Tsimikalis, Stefanos
Title: Trade mark protection for domain names
Source: World Intellectual Property Review. Annual, 2013, pp. 90-93.
Summary: Two methods for legitimate owners to resolve conflicts relating to domain
names in Greece -- domain-name related disputes -- administrative proceedings -- civil
court litigation.
Subject: Trade mark owners' rights--Greece
Subject: Domain name registration--Greece
SNIPER No.: 2013/01447
Author: Olivier, Darren
Title: Trade Mark Registry decisions in South Africa: an analysis
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 6, June 2013, pp.
448-459.
Summary: Analysis of opposition cases heard at the Tribunal of the Registrar of Trade
Marks in South Africa -- backlog of cases waiting on a trial date -- eleven judgments in
total in 2011 and 2012 -- Trade Marks Act 194 of 1993 -- grounds of opposition -parties involved in the last two years -- categories of marks opposed -- summary of
cases heard in 2011 and 2012 -- earlier mark(s) and grounds of opposition relied upon - large proportion of unsuccessful oppositions and cancellation claims -- case law
referred to by the Registrar -- backlog difficult to address given that one Hearing Officer
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employed -- tips for brand owners who may be considering opposition proceedings in
South Africa.
Subject: Trade mark registrability--South Africa
Subject: Trade mark opposition--South Africa
SNIPER No.: 2013/01646
Author: Romano, Valerio Cosima
Title: Trade marks: single colours can be protected (and competitors see red)
Source: European Intellectual Property Review. Vol. 35 No. 6, 2013, pp. 307-308.
Summary: Aesthetic functionality-- single colour legally entitled to trade mark protection
in the fashion industry -- proves to have a secondary meaning for the consumers -- such
registrations does not harm competition in the relevant market -- Christian Louboutin
sued Yves Saint Laurel (YSL) for trade mark infringement -- lacquered red sole on
footwear -- US Second Court of Appeals recalls Supreme Court decision in Qualitex -functionality doctrine -- protecting producers from the free riding of imitating competitors
-- not the shoe itself, but the fact that it has a lacquered sole, which attracts buyers and
gives to the product its fashionable appeal -- Court found red sole mark valid and
enforceable trade mark.
Subject: Famous trade marks
Subject: Colour marks--case law--United States
Subject: Trade mark infringement--case law--United States
SNIPER No.: 2013/01307
Author: Özdoğan, Işik
Title: Trademark damages in Turkey
Source: World Intellectual Property Review. March-April 2013, p. 65.
Summary: Effect of a trade mark cancellation takes place retrospectively -- trade mark
is removed from the registry as if it had never been in force -- Decree-law no: 556
protects registrations granted by the Turkish Patent Institute (TPI) -- even if the trade
mark is cancelled and this cancellation has a retrospective effect, use of a registered
trade mark by the trade mark owner does not constitute trade mark infringement -- the
owner does not have to pay compensation for this use -- Article 44/2 of Law no: 556
provides an exception to this rule -- bad-faith exception.
Subject: Damages--Turkey
Subject: Trade mark cancellation--Turkey
SNIPER No.: 2013/01297
Author: Lantos, Michael
Title: Trademark use and national boundaries
Source: World Intellectual Property Review. March-April 2013, p. 54.
Summary: In national trademark laws, 'use' is a requirement within the boundaries of
the corresponding jurisdiction -- with the increasing significance of electronic sales and
the internationalisation of certain services, the issue has become less clear -- decisions
in Hungary -- offer for sale of certain goods through the Internet which target domestic
consumers has been found to be trade mark infringement -- offer for sale from a foreign
location targeting Hungarian consumers and proof of actual sale across the border
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should qualify as use -- situation is more problematic in case of services -- services can
be provided electronically over great distances -- services where the place of the
service and the place of use can be different -- Hungarian Intellectual Property Office
interpretation in a cancellation case.
Subject: Trade mark use--Hungary
Subject: Electronic commerce--Hungary
SNIPER No.: 2013/01094
Author: Kalibbala, Christine
Title: Trademarks and monopolies
Source: World Intellectual Property Review. January-February 2013, p. 67.
Review: High Court matter -- Foschini Retail Group (Pty) Limited opposed trade mark
applications for the mark 'Due South' and logo belonging to a Jan Coetzee -- trade
marks were similar -- whether the goods/services were so similar as to be likely to
deceive or cause confusion -- considerable debate about how the similarity test is to be
applied -- holistic approach -- mechanical approach -- court chose the mechanical
approach -- rejecting Foschini's claims that any of the goods or services were similar.
Subject: Trade mark opposition--case law--South Africa
Subject: Confusing similarity--South Africa
SNIPER No.: 2013/01877
Author: Tarchila, Nicoleta
Title: Trademarks as business weapons for SMES
Source: World Intellectual Property Review. May-June 2013, pp. 42-44.
Summary: Romanian small and medium-sized companies (SMEs) -- becoming familiar
with trade mark legislation -- importance of registering trade marks for identifying goods
and services -- no obligation to register trade marks -- Romanian company SC
Microbest Boss Trading SRL -- registered its trade name and emblem -- received a
cease and desist letter -- about the registration of the trade mark 'Microbest.Ro &
design' -- asked to contact the legal owner of this mark with a view to making a legal
agreement for further use of this denomination -- SC Microbest Boss Trading filed an
appeal against the registration of the trade mark application 'Microbest.Ro & design' -trade mark registration was rejected -- bad faith on the part of the applicant while filing
this trade mark.
Subject: Trade mark ownership--Romania
Subject: Trade mark registration--Romania
Subject: Small and medium enterprises--Romania
SNIPER No.: 2013/01980
Author: Galasso, Alberto
Title: Trading and enforcing patent rights
Source: RAND Journal of Economics. Vol. 44, No. 2, Summer 2013, pp. 275-312.
Summary: Market for innovation -- licensing and sale of patents -- model of patent and
trade litigation -- description of the data and motivating evidence -- estimating the effect
of trade on litigation -- heterogeneous effects of trade litigation -- individually owned
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patents in the United States -- stimulating tax effects on trading and litigation -- the
market for patents can generate welfare gains.
Subject: Intellectual property enforcement--United States
Subject: Intellectual property licensing--United States
SNIPER No.: 2013/01814
Author: Newton, John, 1955Title: Trafficking in illicit goods: an inclusive INTERPOL programme to combat all types
of illicit trade
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
22-27.
Summary: 'Trafficking in illicit goods' -- generic term used by INTERPOL to describe all
types of illicit trade -- 'IP crime' is a generic term used by INTERPOL to describe all
types of counterfeiting and piracy -- inclusive strategy focused on all types of illicit trade
-- important that proven IP crime strategies and tactics are not forgotten -- operational
conferences and high quality training -- collective global successes -- Operation Maya Black Poseidon -- Operation Meerkat -- Opson II -- developing productive working
relationships with the Indian authorities -- comprehensive inclusive trafficking in illicit
goods strategy -- performance measurement.
Subject: Counterfeiting
Subject: Intellectual property enforcement
SNIPER No.: 2013/01442
Author: Stone, David
Title: Transparency over the use of dotted lines?
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 6, June 2013, pp.
437-440.
Summary: Interpretation of dotted lines in a registered Community design (RCD)
infringement action -- Kohler Mira Limited v Bristan Group Limited -- Examination
Guidelines for Community Designs -- Manual Concerning Proceedings before OHIM for
RCDs -- electric shower units -- RCD 2 infringement case failed as Bristan's products
had opaque front slab -- RCD 1 held not to be infringed -- need for consistent
interpretation of drafting conventions.
Subject: Industrial design infringement--case law--United Kingdom
Subject: Industrial design registration--United Kingdom
SNIPER No.: 2013/01981
Author: Somaya, Deepak
Title: Tribunal specialization and institutional targeting in patent enforcement
Source: Organization Science. Vol. 23 No. 3, May-June 2012, pp. 869-887.
Summary: Institutional targeting between specialized and general-purpose tribunals
available to resolve disputes -- focus on the differences in expertise and procedural
flexibility that usually accompany tribunal specialization -- theory about targeting
decisions or forum shopping -- two main drivers of tribunal targeting -- expected
settlement and expected returns -- hypothesis linking tribunal targeting decisions to firmlevel attributes such as strategic stakes, institutional distance from competitors, and
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tribunal-specific capabilities -- hypothesis tested using data set of patent enforcement
against U.S. imports -- when firms target the Section 337 tribunal in the International
Trade Commission (a specialized venue) versus the district courts (a general-purpose
venue) -- nonmarket strategies associated with patents
Subject: Patent enforcement--United States
Subject: Forum shopping--United States
Subject: Dispute resolution--United States
SNIPER No.: 2013/01974
Author: Pinto, Timothy
Title: UK "Interflora" keyword ruling raises questions over relevant public and burden of
proof
Source: World Intellectual Property Report. Vol. 27 No. 8, August 2013, pp. 49-52.
Summary: English High Court ruling in Interflora v. Marks & Spencer plc -- use by M&S
of the keyword "Interflora" resulted in a display of adverts for M&S's flower delivery
service -- held to have infringed Interflora's trade marks -- facts of the case -- whether
M&S's keyword advertising was an infringement under Article 9(1)(a) and (1)(c) of the
Community Trademark Regulation -- legal principles from EU law -- the judge's
evaluation of the evidence -- analysis of the decision -- implications of interpreting the
judgment narrowly or widely -- no single meaning rule on interpreting advertisements -reverse burden of proof for double-identity cases -- taking unfair advantage without due
cause -- comparative advertising -- practical guidelines for keyword advertisers -- M&S
has been granted permission to appeal to the Court of Appeal on two points -significant proportion test -- reverse burden of proof
Subject: Keyword advertising--case law--United Kingdom
Subject: Trade mark infringement--Europe
Subject:
SNIPER No.: 2013/01967
Author: Radcliffe, Jonathan
Title: UK Supreme Court rules patent's revocation or amendment nullifies earlier
damages awards
Source: World Intellectual Property Report. Vol. 27 No. 8, August 2013, pp. 35-36.
Summary: UK Supreme Court decision -- Virgin Atlantic Airways Limited v. Zodiac
Seats UK Limited -- patent's subsequent revocation or material amendment means that
the patentee is not entitled to recover damages awarded previously -- facts of the case - whether a later finding on a patent defeats earlier res judicata -- significant strategic
consequences for parties involved in patent litigation in UK and Europe
Subject: Damages--case law--United Kingdom
Subject: Patent litigation--United Kingdom
SNIPER No.: 2013/00238
Author: Luo, Xia
Title: Understanding and application of Article 26, paragraph four, of the Patent Law:
what can be learned from the case involving invalidation of patent for precision rotating
compensator
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Source: China Patents and Trademarks. Vol. 111 No. 4, October 2012, pp. 91-94.
Summary: Required compatibility of the generalised scope of claims -- implied
disclosure and sole determination -- obvious error and elimination thereof -- legislative
goal of Article 26, paragraph four of the Patent Law -- Supreme People's Court made
Administrative Judgment No. Xingtizi 13/2011 to reverse the Administrative Judgments
made by the former courts and Invalidation
Request Examination decision.
Subject: Patent validity--China
SNIPER No.: 2013/01077
Author: Anderson, Ben
Title: Understanding the Trademark Clearinghouse
Source: World Intellectual Property Review. January-February 2013, pp. 42-45.
Summary: Proposed changes to the trade mark clearinghouse model -- comments
regarding ICANN's "straw man solution" -- key component of the new generic top-level
domain program -- additional requirements to address stakeholder concerns -clearinghouse 'created as a central repository for information to be authenticated, stored
and disseminated' -- quicker registration of domains -- debate basis involves the
restriction of the time period of the notification mechanisms to 60 days -- 90 days is
what many would prefer -- possible increase in cybersquatting -- no need to register
every term relating to your business under every new top-level domain name
Subject: Brand management
Subject: Domain name registration
Subject: Domain names
SNIPER No.: 2013/01451
Author: Pagenberg, Jochen
Title: Unitary patent and Unified Court: what lies ahead?
Source: Journal of Intellectual Property Law and Practice. Vol. 8 No. 6, June 2013, pp.
480-485.
Summary: Reform of the European patent regulatory regime -- criticism over the secret
negotiations -- compromise by misrepresentation -- promise of a reduction of costs for
patent filing and patent litigation -- not everyone welcomes the patent package -- legal
problems for the Unified Patent Court (UPC) to solve -- amendment to Regulation
1215/2012 -- Article 3(2) of the Treaty on the Functioning of the European Union
(TFEU) -- political compromise and the best patent system for Europe.
Subject: Patent systems--reform--Europe
Subject: Patents--reform--Europe
Subject: Regional patents--Europe
SNIPER No.: 2013/01917
Author: Johnson, Alan
Title: Unitary patent and Unified Patent Court developments
Source: CIPA: the journal, incorporating the 'Transactions', of the Chartered Institute of
Patent Agents. Vol. 42 No. 6, June 2013, pp. 333-334.
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Summary: Update on progress made to unitary patents and the Unified Patent Court -introduction of the bill in France -- France and the United Kingdom are two of the three
mandatory ratification countries -- Spain's challenge filed with the Court of Justice of the
European Union (CJEU) -- challenge to the legality of the unitary patent and language
regulations -- regulations seek to delegate powers to the EPO -- SPCs -- Meroni
doctrine -- rules of procedure -- official version of the 15th draft of the Rules of
Procedure has been passed by the Rules Committee to the Commission.
Subject: Patent systems--reform--Europe
Subject: Regional patents--Europe
Subject: Divisional applications (Patents)--Europe
SNIPER No.: 2013/01769
Author: Birss, Colin
Title: Unitary rights and judicial respect in the EU: 'bringing cool back'
Source: Queen Mary Journal of Intellectual Property. Vol. 3 No. 3, September 2013, pp.
195-203.
Summary: Herchel Smith Lecture, 4 December 2012, delivered by HHJ Birss QC -examines harmonization in Europe and internationally -- highlights increasing need for
measures to aid harmonisation -- facilitate the sharing of information -- understand the
approaches in other countries -- consider how to read judgments from other countries -discuss what can be learnt from the existing unitary rights -- risks of forum shopping that
already exist as well as those that may arise with the unitary patent agreement.
Subject: Patents--reforms--Europe
Subject: Patents--law and legislation--Europe
Subject: Patent systems--Europe
SNIPER No.: 2013/00165
Author: Goldberg, Carole E.
Title: A United States perspective on the protection of indigenous cultural heritage
Source: Graber, Christoph B., et al. (eds.), International trade in indigenous cultural
heritage: legal and policy issues. Cheltenham, U.K.: Edward Elgar, 2012. pp. 331-361.
Summary: No way to place a precise value on the knowledge and cultural heritage of
indigenous peoples of the United States -- many indigenous groups resist
commercialisation, preferring that some of their traditional knowledge and heritage
remain secret or reserved for internal cultural uses -- indigenous groups view certain
knowledge as appropriate for commercialisation -- seek to be the ones who benefit from
that knowledge -- domestic and international law have denied them the opportunity to
control and benefit from the knowledge and heritage that they have developed -potential for United States law to mesh effectively with a procedurally oriented
international regime that could afford protection for indigenous knowledge and cultural
heritage -- domestic United States law -- federal Indian law that addresses tribal
sovereignty -- law specifically directed at traditional knowledge and heritage -- general
laws dealing with intellectual property and cultural expression -- native nations' own
laws -- possibilities and challenges of fitting current United States law and policy into an
international regime of protection.
Subject: Traditional cultural expressions--United States
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Subject: Intellectual property rights--United States
SNIPER No.: 2012/01795
Author: Shabalala, Dalindyebo
Title: United States: Section 110 (5) of the US Copyright Act: summary and analysis
Source: Correa, Carlos M. (ed.), Research handbook on the interpretation and
enforcement of intellectual property under WTO rules. Cheltenham, U.K.: Edward Elgar,
2010. pp. 142-190.
Summary: First TRIPS Copyright case -- first case to interpret the three step test as
embodied in Article 13 of the Agreement on Trade-related Intellectual Property Rights
(TRIPS) -- subsequent scholarship since the case suggest that, the Panel in the case
did little to address the problems of clarity, while adding several more confusing
elements -- case in the light of that subsequent scholarship -- analysis of the case that
focuses on the litigation choices of the parties -- methodology and reasoning of the
Panel in analysing the test -- reactions to the Panel decision -- what the Panel decision
may mean for developing country policies in this area -- key conclusion.
Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994
April 15)
Subject: Copyright--law and legislation--United States
Subject: Copyright--case law--United States
SNIPER No.: 2013/01651
Author: Haddadin, Suhail Haitham
Title: The unnatural nature of intellectual property: an example from a developing
country
Source: European Intellectual Property Review. Vol. 35 No. 6, 2013, pp. 341-351.
Summary: Intellectual property rights as real property rights -- right to exclude others
from IPR will affect the "public" and their right in freedom of speech -- Jordan as a
developing country -- case study of the Hashemite Kingdom of Jordan -- concept of
property in this jurisdiction proves the unnatural nature of conceding property rights to
intellectual creations -- analysis of Jordanian laws -- Jordan does not treat intellectual
creations as property rights -- nature of IP imposed on Jordan, shaping IPR laws in a
manner that is distinct from the will of the founders of the Jordanian legal system -overview of "property" under Jordanian Civil Law (JCL) -- obstacles facing JCL's
approach.
Subject: Intellectual property law--Jordan
Subject: Intellectual property systems--Jordan
SNIPER No.: 2013/01390
Author: Needle, Jacqueline
Title: Untested and unwelcome?
Source: World Intellectual Property Review. Annual, 2013, pp. 34-36.
Summary: Unitary Patent -- aim is to reduce patenting costs -- Unified Patent Court -competence and costs not yet known-- practical implications -- unsure if business are
interested in using the unproven, inflexible and complex regime.
Subject: Unified Patent Court
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Subject: Regional patents--Europe
SNIPER No.: 2013/01343
Author: Preston-Dixon, Tahli
Title: US court considers copyright and the grey market
Source: Australian Intellectual Property Law Bulletin. Vol. 25 No. 10, June 2013, pp.
210-212.
Summary: Goods imported into countries outside the manufacturers' authorised
distribution channels -- legitimate but unauthorised goods -- manufactured for overseas
markets -- a parallel channel for the distribution of goods -- potentially rivalling those
authorised by the manufacturer -- "grey market" parallel imports -- popularity of online
shopping has made it easier for individuals and corporations to source goods from
overseas -- able to establish profitable parallel distribution channels that can remain
undetected by the copyright owner -- contentious practice -- highlights tension between
competition and intellectual property laws -- Kirtsaeng v John Wiley & Sons, Inc. -United States Supreme Court -- application in Australia -- future implications.
Subject: Parallel importing
Subject: Competition (Economics)
Subject: Copyright infringement--case law--United States
SNIPER No.: 2013/01918
Author: Hatch, David
Title: US cracks down on trolls
Source: Managing Intellectual Property. No. 231, July-August 2013, pp. 6-7.
Summary: Tackling patent trolls -- White House issues recommendations -- Federal
Trade Commission (FTC) launched an investigation -- International Trade Commission
(ITC) announced a pilot programme -- response to the rapid emergence of patent trolls - enactment of a new patent law is unlikely this year -- House Judiciary Chairman
Goodlatte's discussion draft focuses on lowering litigation costs -- bill targets behaviour,
and not particular companies or categories.
Subject: Patent trolls--United States
Subject: Patents--reform--United States
SNIPER No.: 2013/01182
Author: Fone, Alexandra
Title: The use of foreign words as trade marks
Source: Australian Intellectual Property Law Bulletin. Vol. 25 No. 9, April-May 2013, pp.
198-199.
Summary: Federal Court decision in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd
-- foreign word trade marks with commonly used, laudatory or descriptive English
translations may still be held as being inherently adapted to distinguish in accordance
with the Trade Marks Act 1995 (Cth) -- serves as a precedent for the relatively high
threshold now required in order to establish invalidity with regards to foreign word trade
marks -- background to the case -- the proceedings -- validity of the trade marks -distinctiveness of the trade marks -- use as trade marks -- infringement of the trade
marks -- defence of good faith -- relief -- partial implications and take-away tips.
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Subject: Trade mark infringement--case law--Australia
Subject: Trade mark distinctiveness--case law--Australia
Subject: Trade mark validity--Australia
SNIPER No.: 2013/01506
Author: Davidson, Justin
Title: Use of trade marks in China OEM production: Ryohin Keikaku v Trade Mark
Review and Adjudication Board (June 29, 2012)
Source: European Intellectual Property Review. Vol. 35 No. 3, 2013, pp. 178-179.
Summary: The MUJI case -- recent decision in China's Supreme People's Court (SPC)
-- original equipment manufacturing (OEM) for export only -- SPC considered whether
evidence relating to OEM activity was sufficient to show "use of a trade mark with a
certain reputation" under art.31 of the PRC Trade Mark Law.
Subject: Trade mark infringement--manufacturing and processing industry--China
Subject: Trade mark use--case law--China
Subject: International trade--China
SNIPER No.: 2013/01811
Author: Orchard, Ruth
Title: The value of intellectual property: how to turn the tide of public opinion
Source: World Trademark Review. Anti-counterfeiting 2013: a Global Guide, 2013, pp.
7-12.
Summary: Increase in the level of hostility shown towards intellectual property rights
and their owners -- controversy has developed about the correct measures to curb
counterfeiting and piracy -- promoting greater public acceptance of the need to protect
those rights in order to safeguard future prosperity -- counterfeiting and piracy
escalating globally -- public awareness campaigns -- gauging public opinion and
identifying where and how it can best be influenced -- issues affecting purchasing habits
of counterfeit/pirated products -- predominant drivers behind counterfeit purchases -deterrents to acquiring counterfeit and pirate products -- guidelines for a successful
campaign -- obtaining political recognition and support -- Real Deal campaign.
Subject: Counterfeiting
Subject: Piracy
Subject: Intellectual property education
SNIPER No.: 2013/02039
Author: Greenhalgh, Christine
Title: The value of intellectual property rights to firms and society
Source: Oxford Review of Economic Policy. Vol. 23 No. 4, 2007, pp. 541-567.
Summary: Intellectual property rights (IPRs) -- rewarding innovation in theory -- how
firms benefit from IPRs -- uniform length of IPRs -- alternative ways of providing
incentives to innovate -- do IPRs interact with market structure and impinge on
competition policy -- role of complementary assets in deriving value from IPRs -- does
innovation occur in the absence of IPRs -- empirical evidence on the value of IPRs -variability of returns to patents and trade marks -- identifying social returns -- whether
smaller firms are disadvantaged by their size in the use of IPRs.
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Subject: Intellectual property management
Subject: Intellectual property--economics--United Kingdom
SNIPER No.: 2013/01778
Author: Du Mont, Jason J.
Added author: Max-Planck-Institut für Immaterialgüter- und Wettbewerbsrecht
Added author: Maurer School of Law
Title: Virtual designs
Source: Max Planck Institute for Intellectual Property and Competition Law Research
Paper. No. 13-13, 16 May 2013.
General Note: Also published in: Stanford Technology Law Review
Summary: Design patent -- United States -- protection of virtual designs -- virtual
designs as a patentable subject matter -- historical foundations -- contemporary design
patent rules -- USPTO treatment of virtual designs -- patenting and pendency -examination guidelines -- design quality -- design value -- emerging issues -- validity -infringement -- calculation of damages -- interface between virtual design patents and
other IP rights.
Subject: United States. Patent and Trademark Office--procedure
Subject: Industrial designs--United States
Subject: Industrial design examination--procedure--United States
Subject: Intellectual property offices--procedure--United States
SNIPER No.: 2013/01752
Author: Player, Jane
Title: Vive la resolution!
Source: Intellectual Property Magazine. July-August 2013, pp. 55-56.
Summary: Research by the World Intellectual Property Organization's (WIPO)
Arbitration and Mediation Center -- gulf between litigation, arbitration and alternative
dispute resolution (ADR) -- survey quizzed 393 technology experts from 62 countries
across various intellectual property (IP) rich industries -- litigation and arbitration have
both become too costly and take too long -- market preferences are moving towards
out-of-court dispute resolution mechanisms -- use and knowledge of the advantages of
mediation is growing -- forum neutrality as an advantage of mediation.
Subject: Dispute resolution--statistics
Subject: Intellectual property litigation
SNIPER No.: 2013/01864
Author: Clevy, Sébastien
Title: Waldorf=Astoria luxury hotels and Waldorf Australia Group apartments "hotels": a
tale of two Waldorfs
Source: Australian Intellectual Property Law Bulletin. Vol. 26 No. 2, August 2013, pp.
28-32.
Summary: Recent decision of the delegate of the Registrar of Trade Marks -- Hilton
Hospitality Inc, owner of the hotel Waldorf=Astoria in New York and international resorts
bearing the Waldorf=Astoria brand, opposed the registration of trade mark applications
incorporating the name WALDORF filed by Waldorf Australia Group, an accommodation
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operator of serviced apartments and apartment hotels -- background to the case -- the
dispute -- the decision.
Subject: Trade mark opposition--Australia
Subject: Trade mark use--case law--Australia
Subject: Evidence--Australia
SNIPER No.: 2013/01748
Author: McGonigal, Dominic
Title: Weathering the copyright storm
Source: Intellectual Property Magazine. July-August 2013, pp. 46-48.
Summary: World Creators Summit -- common thread was the digital narrative -- tech
companies paying something to creators -- online revenues -- creators struggling to
make ends meet -- technology companies have grown -- creative works are making
more money than ever -- internet service providers (ISPs) and Google are profiting -licensing an area of dissention among the creative community -- frustrations over multiterritory licensing and the battles between direct licensing and collective -- tensions
between writers and publishers -- copyright enforcement -- summit saw the launch of
two new initiatives.
Subject: Copyright licensing
Subject: Intellectual property industry
SNIPER No.: 2013/01291
Author: Calliari, Maria Alice
Title: A welcome modernisation of the Brazilian Patent Office
Source: World Intellectual Property Review. March-April 2013, p. 48.
Summary: Modernisation efforts of the Brazilian Patent and Trademark Office (INPI) -innovation has become important to boosting economic growth -- strong impact on INPI
administration -- aims to be among the world's nine largest patent and trade mark
offices -- revision and consolidation of all the INPI guidelines and regulations -- e-patent
system -- priority examination for green patent applications -- further developments are
still expected.
Subject: Intellectual property law--reform--Brazil
Subject: Patent examination--Brazil
SNIPER No.: 2013/01178
Author: Hey, Georgina
Title: Welcome to the family (of trade marks)
Source: Australian Intellectual Property Law Bulletin. Vol. 25 No. 9, April-May 2013, pp.
182-186.
Summary: Family marks -- legal nuts and bolts -- a question of approach -- tips and
traps for franchises -- constant vigilance -- who owns what? -- registering a family mark
or a separate mark? -- have a clear idea of the family of marks you are creating -- trade
mark use -- genericide -- maximising protection for a family of marks.
Subject: Trade mark registration
Subject: Trade mark use
Subject: Franchising
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SNIPER No.: 2013/01306
Author: Lee, Victor S. C.
Title: What has changed for patent damages?
Source: World Intellectual Property Review. March-April 2013, p. 64.
Summary: Major changes to Taiwan's Patent Act -- damage claims for patent
infringement -- subjective element of patent infringement -- calculating damage claims -damage claims in cases where no patent marking is available.
Subject: Damages--Taiwan
Subject: Patents--reform--Taiwan
SNIPER No.: 2013/01654
Author: Bicknell, Paul
Title: What might the Court of Justice's ruling in Fédération Cynologique Internationale
v Federación Canina Internacional de Perros de Pura Raza hold for the future of section
11(1) of the Trade Marks Act 1994?
Source: European Intellectual Property Review. Vol. 35 No. 6, 2013, pp. 361-362.
Summary: Court of Justice found that Article 9(1) of the Regulation must be interpreted
as meaning that the exclusive right of the proprietor of a Community trade mark to
prohibit all third parties from using it, in the course of trade, signs identical with or similar
to its trade mark, extends to a third party proprietor of a later registered Community
trade mark -- without the need for that latter mark to have been declared invalid
beforehand -- implications for s.11(1) of the Trade Marks Act 1994.
Subject: Community trade mark
Subject: European Parliament. Regulation (EC) No 207/2009 of 26 February 2009 on
the Community trade mark
Subject: Trade mark infringement--Spain
SNIPER No.: 2013/01655
Author: Baggs, Simon
Title: What's the catch?: the CJEU judgment in ITV v TV Catchup Ltd.
Source: European Intellectual Property Review. Vol. 35 No. 6, 2013, pp. 363-365.
Summary: Broadcasting right -- Court of Justice of the European Union -- ruling that the
near simultaneous retransmission of television broadcasts via the internet can constitute
a communication to the public within Art 3(1) of Directive 2001/29 (the Copyright
Directive) -- background to the case -- whether there was a communication to a public -when is the new public criterion applicable -- relevance of other factors -- impact of the
judgment -- case to return to the High Court for final adjudication -- judgment only
affects a handful of the channels carried by the service.
Subject: Copyright infringement--culture and entertainment industry
Subject: Copyright--interpretation--Europe
Subject: Copyright--case law--Europe
SNIPER No.: 2013/01096
Author: Özdoğan, Işik
Title: When trademark protection is not enough
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Source: World Intellectual Property Review. January-February 2013, p. 69.
Summary: Unfair competition rules -- defined in the Turkish Commercial Code (TCC) -provides protection against unfair competition that may occur between competitors,
providers and customers, and advertisements which are misleading and violate the
bona fide principle -- basis of the unfair competition rules lies in the general principles of
the Turkish Civil Law -- Article 55 of the TCC provides a list of examples of acts that
constitute unfair competition -- Calgon v Peros -- Nivea Soft v Rebel Soft -- Danino v
Buÿümix.
Subject: Competition (Economics)--case law--Turkey
Subject: Confusing similarity--case law--Turkey
SNIPER No.: 2013/01431
Author: Gooch, Joseph T.
Title: Who's in charge: an analysis of BPAI decisions regarding Section 101
patentability in light of Bilski and Mayo
Source: Journal of the Patent and Trademark Office Society. Vol. 95 No. 1, 2013, pp.
60-98.
Summary: Current fluctuations within the field of process patents -- two major Supreme
Court decisions -- Bilski v Kappos (2010) and Mayo v. Prometheus Laboratories, Inc.
(2012) -- contradictory Federal court cases -- whether the Board of Patents Appeals
and Interferences (BPAI) analytical approach is responsive to these doctrinal
fluctuations -- BPAI's analysis of process patent applications has in direct contradiction
to Supreme Court and Federal Circuit doctrine -- divergence from Supreme Court
doctrine forces patent applicants to contend with two separate sets of patent
requirements.
Subject: Patent examination--procedure--United States
Subject: Patentability--case law--United States
Subject: Patent claims--United States
SNIPER No.: 2013/00233
Author: Zhao, Jing
Title: Why later applied "TANLUZHE" mark survived: application of Article 28 of the
Trademark Law from the perspective of the "Tanluzhe"
Source: China Patents and Trademarks. Vol. 111 No. 4 October 2012, pp. 45-47.
Summary: Trade mark registration -- 'Tanluzhe' Chinese trade mark, pronounced as
'tan lu zhe', written as 'Toread' in English -- confusing similarity -- distinctive part of the
two words similar -- prior trade mark right -- application of provision of law -- Article 28 -integration of the legislative aim.
Subject: Trade mark registration--China
SNIPER No.: 2012/02654
Author: Posner, Richard A.
Title: Why there are too many patents in America
Source: The Atlantic. 12 July 2012.
Summary: Serious problems posed by the structure and administration of current U.S.
patent law -- law does not discriminate among types of inventions or particular
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industries -- need for patent protection in order to provide incentives for innovation
varies greatly across industries -- pharmaceutical industry as an example of an industry
needing patent protection -- high cost of inventing and testing new drugs -- cost of
invention is low for most other industries -- defensive patenting -- patent rolls -- costs or
resolving disputes -- patent litigation -- jury trials -- difficulties and high costs of doing a
prior art search -- high litigation costs to defend infringement suit -- understaffing at
United States Patent and Trademark Office -- perfunctory examinations -- too many
patents being issued -- suggestions for reform -- reducing patent term for some
industries -- compulsory licensing -- eliminating court trials -- expanding role of USPTO
to try patent cases -- forbidding patent trolls -- making patentee produce the patented
invention within a specified period
Subject: Patent systems--reform--United States
Subject: Patent litigation--reform--United States
SNIPER No.: 2013/01392
Author: Wylie, Adam
Title: Widening the net: the case for outsourcing
Source: World Intellectual Property Review. Annual, 2013, pp. 42-43.
Summary: Outsourcing considered an option for attorneys and businesses facing
increased costs and time pressures -- rationale behind law firms and industry
outsourcing IP management -- main things external service providers can offer -- which
specific business areas in IP lend themselves most to outsourcing -- what savings
possible using this approach -- what should particular clients look for when choosing a
service provider.
Subject: Outsourcing--intellectual property industry
SNIPER No.: 2013/01865
Author: Williams, Annabelle, 1988Title: Winnebago's road trip to the Full Federal Court
Source: Australian Intellectual Property Law Bulletin. Vol. 26 No. 2, August 2013, pp.
33-34.
Summary: Full Federal Court reconsidered the decision of Foster J in Winnebago
Industries, Inc v Knott Investments Pty Ltd -- Knott sought relief against a decision
restraining it from using the name "Winnebago" and "W" logos in connection with the
manufacture, promotion or sale of recreational vehicles and against the removal of the
trade marks from the Register -- Full Court upheld many of the primary judge's findings - reversed elements of the decision -- Court held that discretionary considerations
applied when determining relief -- Winnebago's reputation in Australia -- the settlement
agreement -- relief granted.
Subject: Trade mark cancellation--case law--Australia
Subject: Damages--case law--Australia
SNIPER No.: 2013/01985
Author: Dent, Jennifer
Title: WIPO Re:Search: a consortium catalyzing research and product development for
neglected tropical diseases
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Source: Pharmaceutical Patent Analyst. Vol. 2 No. 5, September 2013, pp. 591-596.
Summary: WIPO's role to promote the development and use of the international IP
system -- assist to obtain protection internationally for patents, trade marks, design and
appellations of origin -- sharing of IP to advance the discovery and development of new
drugs, vaccines and diagnostics for neglected tropical diseases, malaria and
tuberculosis --- WIPO's Global Challenge -- pharmaceutical company members
Alnylam, AstraZeneca, Eisai, GlaxoSmithKline (GSK), Merck, Novartis, Pfizer and
Sanofi to support the Consortium -- contributing a wide variety of IP assets to the online
WIPO Re:Search database -- facilitating research collaborations -- repurposing drugs -tackling malaria -- combatting diarrheal disease -- leveraging expertise through
partnership -- accelerating research.
Subject: Computer-related inventions--pharmaceutical industry
Subject: Pharmaceuticals--research
Subject: Medical research--health and community services industry
SNIPER No.: 2013/01761
Author: Adamo, Kenneth R.
Title: With a little help from my FRAND
Source: Intellectual Property Magazine. July-August 2013, pp. 76-78.
Summary: United States district court Northern District of California -- Realtek
Semiconductor v LSI and Agere Systems -- standard setting organisations (SSO) -competitors agree on common standards that will provide necessary interoperability -identification of standard essential patents (SEPs) -- SEP owners license those patents
to all standard-users on fair, reasonable and non-discriminatory (FRAND) terms -- how
to calculate a FRAND rate -- effect of FRAND obligation on alternative modes of relief.
Subject: Standards (Technical)--United States
Subject: Intellectual property licensing--United States
SNIPER No.: 2013/01523
Author: Heindl, Sabiene
Title: Wrong way: go back!: domain name redirects held to infringe trade marks
Source: Australian Intellectual Property Law Bulletin. Vol. 26 No. 1, July 2013, pp. 1819.
Summary: Trade mark infringement on the internet -- extending to domain "street
signs" that redirect traffic away from competitors -- DRH Holdings (Aust) Ltd v David
Reid Homes Australia Pty Ltd -- Federal Court affirmed previous decisions that the use
of a trade mark as a domain name to redirect unsuspecting customers to a competitor's
website or another website can constitute trade mark infringement -- background to the
case and its predecessors.
Subject: Trade mark infringement--case law--Australia
Subject: Domain names--Australia
SNIPER No.: 2012/01796
Author: Santa Cruz, Maximiliano
Title: WTO panel on United States: Section 110 (5) of the US Copyright Act
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Source: Correa, Carlos M. (ed.), Research handbook on the interpretation and
enforcement of intellectual property under WTO rules. Cheltenham, U.K.: Edward Elgar,
2010. pp. 191-214.
Summary: Dispute between the European Communities and the United States -Dispute Settlement Body (DSB) of the World Trade Organization (WTO) has adopted a
panel report -- issue was the compatibility of certain limitations to the exclusive rights of
right holders incorporated in the US Copyright Act with the TRIPS Agreement and the
substantive provisions of the Berne Convention -- exceptions in dispute -- main
arguments and findings in the dispute -- provisions in the US Copyright Law that were
questioned by the European Communities -- provisions of the TRIPS Agreement and
the Berne Convention allegedly violated by the homestyle and business exceptions -importance of the findings, particularly to the use of exceptions and limitations.
Subject: Agreement on Trade-Related Aspects of Intellectual Property Rights (1994
April 15)
Subject: Copyright--law and legislation--United States
Subject: Fair use (Copyright)--United States
SNIPER No.: 2013/01880
Author: Fütman, Özlem
Title: You say potato: grown in Idaho
Source: World Intellectual Property Review. May-June 2013, pp. 54-55.
Summary: A Turkish company filed an application for the word mark 'Idaho' in Class 31
-- potatoes grown in Idaho are famous -- 'Idaho' is a registered certification mark in the
United States -- derivatives of the Idaho brand have been registered before the US
Patent and Trademark Office and in other countries in the name of the Idaho Potato
Commission -- Commission had no trade mark registration filed with the Turkish Patent
Institute (TPI) -- application created lots of reaction -- commission collected evidence
and formulated opposition -- filed opposition and a third party opinion -- based on bad
faith of the applicant -- no geographical indication protection in the United States -- TPI's
decision.
Subject: Trade mark opposition
Subject: Geographical indicators
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