Tag archives: patents

NFTs and IP – Your opportunity to comment

On November 23, 2022, the US Patent and Trademark Office and the US Copyright Office issued a request for public comment on the subject of Non-Fungible Tokens (NFTs) and intellectual property rights. Comments are due by Monday, January 9, 2023. In addition, the Offices will offer three public roundtables: one panel on NFTs and patents … Continue reading

How does an offer for sale affect the patentee’s profitability – an economic analysis from the SPC

By Justin Davidson (HK) and Stanley Ng on November 2, 2021 Posted in Patents

Under the PRC Patent Law, the offering for sale of an infringing product constitutes an act of infringement, regardless of whether the product is actually sold or not. However, there are divergent views as to what damages arise merely from such offering (without any actual sale). According to one school of thought, the patentee does … Continue reading

Federal Circuit upholds constitutionality of TTAB judges

By Andrea Shannon (US) and Robert Greeson (US) on September 7, 2021 Posted in Patents, Trademark

This week the Federal Circuit rejected a constitutional challenge to the Secretary of Commerce’s appointment of administrative judges to the Trademark Trial and Appeal Board (“TTAB”) at the U.S. Patent and Trademark Office (“USPTO”). The decision comes on the heels of the Supreme Court’s decision in June in Arthrex v. Smith & Nephew, which stated … Continue reading

Consultation Open for Australia’s Medical and Biotechnology Patent Box

By Jackie O'Brien (AU) on July 13, 2021 Posted in General, Intellectual Property, Patents

On 5 July 2021, the Government released its Discussion Paper setting out the Government’s proposal and seeking views from key stakeholders. The paper will be open for submissions until 16 August 2021. Now is the opportunity for stakeholders to put forward their suggestions as to what a patent box in Australia should entail. Patent boxes … Continue reading

U.S. Supreme Court sides with Google and ends software copyright battle

By Allie Porter (US) and Felicia Boyd (US) on April 14, 2021 Posted in Copyright

The Supreme Court ruled on whether Google’s copying of Oracle's Java SE API program was a protected “fair use” under US copyright law.… Continue reading

Combating the unsustainable rise of patent application numbers in the PRC

By Justin Davidson (HK) and Stanley Ng on February 22, 2021 Posted in Intellectual Property, Patents

In the last decade there has been an exponential increase in the amount of patent filing originating from China, which, according to a recently published USPTO report, can be attributed to certain non-market factors including subsidies and targets set by various governmental authorities in China. Coincidently, or perhaps not coincidentally, the China National Intellectual Property … Continue reading

China’s 2020 Patent Law Reform and Patent Linkage System

By Justin Davidson (HK) and Stanley Ng on November 26, 2020 Posted in Patents

Patent Law Reform We discussed the second draft of proposed amendments to the People’s Republic of China (“PRC”) Patent Law in our previous blog post here. Since then, on 17 October 2020 the PRC National People’s Congress (“NPC”) approved most of the amendments, though the law as passed is different from the draft in two … Continue reading

China Releases Draft Patent Law Amendment

By Justin Davidson (HK) and Stanley Ng on July 24, 2020 Posted in Patents

On 3rd July 2020, the National People’s Congress (NPC) of the People’s Republic of China released a second draft of proposed amendments to the PRC Patent Law for public consultation. In response to opinions from various government authorities and experts, the second draft incorporates several important changes of note: Partial design protection The draft includes … Continue reading

Willfulness not required for profits awards in trademark infringement suits

By Tim Kenny (US), Felicia Boyd (US) and Joy Wang (US) on April 24, 2020 Posted in Trademark

A trademark infringement suit is not required to show willful infringement as a precondition to a disgorgement of the infringers’ profits.… Continue reading

CIIs – The Australian Full Court Encompass Decision

By Helen Macpherson (AU) and Harrison Ottaway (AU) on October 29, 2019 Posted in General, Patents

Overview The patentability of computer implemented inventions (CII) has long been a contentious topic in Australian patent law. A few months ago, we wrote about Justice Robertson’s decision in Rokt Pte Ltd v Commissioner of Patents, which overturned the Australian Patent Office’s rejection of a patent application for a CII relating to a digital advertising … Continue reading

The highs and lows of the 2019 Australian IP Report

By Georgina Hey (AU) and Benjamin Kende on July 15, 2019 Posted in Trademark

The highs and lows of the 2019 Australian IP Report To mark World Intellectual Property Day, IP Australia released its seventh edition of the Australian Intellectual Property Report 2019 (Report). The Report provides a snapshot of the Australian IP landscape in 2018 by consolidating data, highlighting trends and critically analysing its future. In this article, … Continue reading

Venezuela and US trademark owners

By Susan Ross (US) on March 28, 2019 Posted in Trademark

US owners of patents and trademarks who have registered them in Venezuela find themselves in the unusual position of being prohibited by the US government from paying Venezuela any required fees in the Venezuelan cryptocurrency, the Petro. For more information, please read our Legal Update.… Continue reading

Recent developments for IPR protection in China

By Justin Davidson (HK) on November 12, 2018 Posted in Copyright

On November 5th 2018, at the inauguration ceremony of the first-ever China International Import Expo held in Shanghai, President Xi Jinping reassured investors, especially foreign enterprises, on the administration’s determination to protect their intellectual property rights in China. In the speech, President Xi announced that in order to significantly increase the cost of infringing IPR … Continue reading

Amended Australian IP laws receive Royal Assent with little fanfare

By Georgina Hey (AU) and Isobel Taylor (AU) on September 24, 2018 Posted in Copyright, General, Trademark

On 24 August 2018, the creatively named Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill 2018 quietly received Royal Assent, with some parts of the new Act entering into force the following day. As the name indicates, the primary focus of the new legislation is to implement the recommendations made … Continue reading

What Brexit means for IP: The UK Law Society, the IP Bar, CIPA and CITMA weigh in on Brexit strategy

By Georgina Hey (AU) and Rebecca Brenikov (AU) on January 21, 2018 Posted in Advertising, General, Trademark

It’s no surprise that many in the professional and legal services industries are putting increasing thought into what the post-Brexit world will, or should, look like. The Chartered Institute of Patent Attorneys (CIPA) in the UK has been the latest body to put its two cents (or pennies) into the mix. Brand owners from all … Continue reading

Australia – No extensions for Swiss style Pharma Patents

By Helen Macpherson (AU) and Rohan Sridhar (AU) on August 31, 2017 Posted in Advertising, General

A Full Court of the Federal Court has confirmed that patents containing “Swiss-style” claims are outside the scope of the Australian patent term extension regime in its recent judgment of Commissioner of Patents v AbbVie Biotechnology Ltd [2017] FCAFC 129. What it means: Patents which claim methods or processes involving pharmaceutical substances cannot be extended … Continue reading

Court decision highlights difficulty in challenging innovation patents

By Helen Macpherson (AU) on August 21, 2017 Posted in Advertising

Late last month, Justice Burley handed down his decision in Doric Products Pty Ltd v Asia Pacific Trading (Aust) Pty Ltd [2017] FCA 849. The decision provides a useful illustration of how Australian Courts will approach construction, infringement and validity issues in innovation patent proceedings, and emphasises the difficulties respondents face when challenging the validity … Continue reading

Digging through the mud to see the damage sustained

By Helen Macpherson (AU) and Melanie Armsby (AU) on July 12, 2017 Posted in Advertising

The Full Federal Court in Australia has made it clear that, in an action for unjustified threats, a party is entitled only to damage sustained as a result of the unjustified threats under section 128 of the Patents Act 1990 (the Act), and not damage sustained as a result of infringement proceedings subsequently commenced (Australian … Continue reading

Productivity Commission’s Report on Australia’s IP system

By Georgina Hey (AU) on March 7, 2017 Posted in Advertising, Trademark

The Inquiry Report into Intellectual Property Arrangements recently published by the Productivity Commission (Report) argues that Australia’s IP system is weighted too heavily in favour of rights holders and against the interests of the broader community. It has made various recommendations to correct this perceived imbalance. This article considers some of the recommended changes which, … Continue reading

Canadian patent and trademark agents acquire privilege

By Elizabeth Williams (CA) on July 8, 2016 Posted in Trademark

As of June 24, 2016 clients will enjoy the same level of privilege with their Canadian patent and trademark agents as they do with their lawyers. This statutory privilege applies retroactively to any confidential communications made prior to this date, but does not apply to ongoing actions or proceedings. Bill C-59 (An Act to implement … Continue reading