Posts Tagged: "International"

It is a ubiquitous concept that U.S. IP rights cannot extend beyond the territorial borders of the U.S. But the IP world may be in for a change. If the Supreme Court upholds the Federal Circuits decision in Life Technologies Corporation, et al. v. Promega Corporation (No. 14–1538) currently pending before the Supreme Court, it will change the way companies engage in domestic and international business. The Supreme Court is specifically set to consider if supplying a component to a foreign manufacturer of a patented product creates liability under 35 U.S.C. § 271(f)(1).

President-Elect Donald Trump has announced that he will withdraw the United States from the Trans-Pacific Partnership (TPP) agreement on his first day in office. So ends more than five years of often heated negotiations led by President Barack Obama’s administration as part of an overall strategy to strengthen the US position in the Pacific Rim region… Pulling out of the TPP is a missed opportunity for the US to pursue its IPR agenda in the Pacific Rim economies.

Classic trademarks consist of word or graphic elements, or their two-dimensional combinations. Naturally, they are targeted at one human sense only. Such trademarks can only be perceived by sight. Sight can also help us to perceive non-traditional trademarks such as “color” and shape trademarks. However, apart from sight, man has four other senses: smell, touch, hearing and taste.

European practice requires a strict distribution of the features before and after “characterizing”, where those prior art features that are common with the definition of the invention must be included in the pre-characterizing part. A useful way of thinking about a 2-part claim is that, schematically, the pre-characterizing part, taken alone, is a claim that covers the invention but is so broad that it covers also the closest prior art. This broad definition is followed by a characterizing part that specifies the features that confer novelty to the entire claim. Thus, the pre-characterizing part is is not a definition of the prior art but is a non-novel definition of the invention.

Of the 2.9 million patent applications which were filed in patent offices across the world in 2015, more than one million of those applications were filed with the State Intellectual Property Office (SIPO) of China, the first time that a single patent office has broken that milestone according to the World Intellectual Property Organization (WIPO). China’s huge number of filings is a big reason why worldwide patent applications rose 7.8 percent from 2014’s totals. WIPO also notes that China received more patent applications than its next three rivals combined: the United States (589,410 patent applications); Japan (318,721); and the Republic of Korea (213,694).

Another unnecessary limit that US applicants almost always impose on themselves is in the number of claims. In Canada, there are no extra claim fees. As we all know, more claims are most of the times a good thing. In many cases, adding claims would require additional drafting and the applicant may not be willing to spend more on claim drafting. However, there are a few cases in which additional drafting efforts are small and for which adding existing claims to the Canadian patent application would be cost effective.

Even with its relatively small population, Canada is the largest export market for the US, with about 200 billion dollars worth of exports each year. Exporting to Canada from the US is a well-known process, and an inventor or company wishing to do so will have no difficulty in finding a company that can handle all the required paperwork and logistics. Even if one does not wish to export to Canada, licensing or sale of a patent is always a possibility. I have many clients whose business model revolves around finding products that sell well in the US and which are likely to sell well in Canada, having these products manufactured in China, and selling them in Canada. I often get asked to confirm that one of these products is not protected by a patent in Canada. If there is no Canadian patent, my clients are able to profit from the US inventor’s ingenuity.

The message is being received by patent owners around the world, including those with large U.S. patent portfolios, that China is a reasonable and fair place to resolve patent disputes… Aside from any anecdotal evidence and cultural bias theories, it is also hard to ignore the reality playing out inside the Chinese IP courts. Foreign patent holders have been having a great deal of luck in China’s IP courts, at least at the courthouse situated in Beijing… If these patent granting and litigation trends continue, we could be left with the rather mind-numbing conclusion that China, a country ruled by a communist government, has a more robust innovation protection regime than the United States, an ostensibly capitalist country that doesn’t seem to see the virtue in protecting the rights of innovators.

A recent Canadian survey (CRA Survey) has conclusively attributed lowered levels of R&D investment in Canada’s innovation ecosystem to the country’s unique judicial “Promise Doctrine.” The Promise Doctrine is a controversial patent elimination dynamic, judicially imposed during patent enforcement proceedings, often after a patented product has achieved its developmental endpoint, having successfully completed its long and costly commercialization. By its unpredictable applicability, like an unseen open manhole, Canada’s promise doctrine can cancel the benefits of a long journey at its market-ready endpoint… As the Survey suggests, long-lasting damage to Canada’s innovation ecosystem may already have occurred, which is why the Survey bears so heavily on the U.S. patent system’s own endpoint “open manhole”, Inter partes review (IPR). However Canada deals with its promise doctrine woes, we too have much to learn from this Canadian Survey.

Over the last two years, the Australian patent and trade mark attorney profession has seen a number of significant changes. The 2013 amendments to the Patents Act 1990, meant that Australian patent and trade mark attorney firms could incorporate. This led to the consolidation of some of Australia’s biggest patent and trade mark attorney firms. These consolidated firms have subsequently listed on the Australian Stock Exchange to raise capital and have since been on an aggressive acquisition spree to achieve market dominance… In short, there are inherent conflicts of interest when an individual or entity is obliged to act for both clients and shareholders.

Patent offices are failing to keep up with the growth of the innovation economy and the resulting increase in patent applications. Unfortunately, the problem could easily get worse in coming years. Many patent offices apparently have yet to process applications from recent years, when huge increases in applications have occurred. It’s a problem that threatens to undermine the global patent system, but what’s both encouraging and discouraging by turns is that it’s largely a basic problem of good governance. Many of the solutions to the problem are relatively straightforward. They require the application of sufficient resources and a willingness to hire an appropriate number of examiners and share work between patent offices. These solutions are a matter of political will and effective management, rather than complex policy. Some countries have shown the will to turn things around, and we hope others will follow.

Legislating for tobacco-style plain packages for confectionery is a disproportionate response to the obesity crisis and strips companies of valuable trademarks, writes the Institute of Economic Affairs’ head of lifestyle economics.

‘Plain packaging’ is a policy which eliminates all branding and visual design elements on products and forces manufacturers to use state-mandated colors and typefaces to create homogenized packaging with no differentiating features. Plain packaging is currently only applied to tobacco products in a handful of countries worldwide, but if health activists have their way that will change.

Softbank’s acquisition of ARM Holdings is widely known and several blogs and articles have tried to explain the business background of the huge deal. Just following the BREXIT vote, one of the best-known (worldwide) United Kingdom-based high tech companies is leaving the for seemingly greener pastures. Despite the new owners’ assurances to leave the headquarters in the United Kingdom and promises to double the number of employees in five years, speculation persists. And, though much has been reported about the business deal, little has been said about how the acquisition changed Softbank’s IP portfolio.

The U.S. government weighs in on Life Technologies’ side because “the application of U.S. patent law to participation by U.S. exporters in foreign markets also raise issues concerning the competiveness of American companies abroad and the respective roles of the United States and other nations’ patent laws.” The government argues that the Federal Circuit has not given a workable definition to determine when a component is sufficiently important or essential as to be “a substantial portion of the components.” The government also argues that, in legislating § 271(f), Congress’s purpose was to outlaw evasion of a U.S. patent by conduct that tantamount to manufacturing the patented invention in the U.S. for export. The government argues that there is no clear expressed Congressional intent for § 271(f) to reach supplying a single staple article: when the product is made abroad except for such a staple article, Congress left that predominantly foreign conduct to be regulated by foreign law. Finally, the government argues that the presumption against extraterritoriality requires the courts to assume both that “legislators take account of the legitimate interests of other nations” and “foreign conduct is generally the domain of foreign law.”

The distinctive character is one of the universally accepted criteria for registration of a sign as a trademark. This criterion is derived from the main function of a trademark, i.e. to distinguish the goods or services of one undertaking from those of other undertakings. This requirement is set out in Article 6quinquies (B) (2) of the Paris Convention for the Protection of Industrial Property and in the national laws of the countries that are parties to this Convention. Ukraine and the European Union (the “EU”) are no exception. Both in Ukraine (Article 6(2) of the Law of Ukraine “On Protection of Rights to Trademarks”) and in the EU (Article 3(1) of the EU Directive to approximate the laws of the Member States relating to trade marks), signs which are devoid of any distinctive character may not be registered as trademarks.