Manual IP News and Unitary Patent News edited by Arnold & Siedsma
 
Unified Patent Court News edited by Bristows
 
Kluwer Copyright Cases edited by IViR
 
Kluwer Patent Cases edited by Brinkhof
 
IP Law Daily - Selected US Cases edited by CCH
 
Volume 2019 - Issue 4
February 2019
 
 
 

News

 
General Information (4)
 
 
Belarus slashes patent fees for scientific bodies
 
The Belarusian National Centre for Intellectual Property (NCIP) has introduced revised official fees for IP-related services with effect from 1 January 2019.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 Feb 2019
 
Belarus Full text
 
 
 
 
 
Kazakhstan revises fee schedule for IP-related processes
 
Kazakhstan has recently amended its fee schedule relating to intellectual property matters, and the new fee structure came into effect on 3 January 2019
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 Feb 2019
 
Kazakhstan Full text
 
 
 
 
 
Myanmar passes new laws on trademarks and industrial designs
 
On 30 January 2019, the Union Assembly of Myanmar passed two important legislations relating to intellectual property—the Trademark Law and the Industrial Design Law.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 Feb 2019
 
Myanmar Full text
 
 
 
 
 
Turkey hikes IP procedural and filing fees
 
The Turkish Patent and Trademark Office (TPTO) has introduced significant changes in its official IP-related fees with effect from 1 January 2019
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 Feb 2019
 
Turkey Full text
 
 
 
 
 
Patents/Utility Models (6)
 
 
Austria signs Provisional Application Protocol UPCA
 
Austria signed the Unified Patent Court (UPC) Agreement’s Protocol on Provisional Application (PPA) on 29 January 2019.

This has been reported by Bristows. The PPA allows various provisions of the UPCA to come into force early. ‘Ratification of the PPA is required [in Austria] but this is expected to be a relatively quick, formal procedure.’  

Austria ratified the UPCA in 2013, being the first country to do so..
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 Feb 2019
 
Austria, European Union Full text
 
 
 
 
 
‘Pharma companies should use the UPC’
 
‘If and when the pan-European patent court and Unitary Patent are established, pharma and biotech companies should play their full part in the new system.’

This was argued during IAM’s third annual pharma and biotech IP conference, early February 2019 in London.

‘Panellists holding in-house positions said they were looking forward to the UPC and unitary patent’s creation, adding that it was important for life sciences companies to be involved in shaping case law rather than leaving that to other industries with different interests.’
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 Feb 2019
 
European Union Full text
 
 
 
 
 
No deal Brexit guidance includes remarks on Unitary Patent system
 
The Law Society in the UK has published guidance for solicitors in case the UK leaves the EU without an exit agreement, including remarks about the Unitary Patent system.

According to the document, ‘it is generally accepted that the draft Withdrawal Agreement’s proposed transition phase would permit the UK to continue to be a part of the UPC system, at least for the duration of that period. 

However, it is less certain that the UK could remain in the UPC system under a no deal scenario. It is unclear whether the CJEU would regard the participation of a non-EU member state in a UPC system with the power to refer matters to the CJEU as lawful, and in particular whether UK participation in the unitary patent part of the UPC package is possible.

In addition, the ability of solicitors to represent clients in the UPC would be in doubt (…) even in a scenario where the UK itself was allowed to participate in the UPC (…).
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 18 Feb 2019
 
European Union, United Kingdom Full text
 
 
 
 
 
Hong Kong IP Department set to introduce new patent search system
 
On 2 January 2019, the Hong Kong Intellectual Property Department (HKIPD) announced that it will launch the New Integrated IT System (NIS) on 14 February 2019
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 Feb 2019
 
Hong Kong Full text
 
 
 
 
 
Brazil extends PPH with Japan, also expands target tech field of PPH
 
The Patent Prosecution Highway (PPH) pilot programme between the Brazilian Patent and Trademark Office (INPI) and the Japan Patent Office (JPO) has been extended for a further period of two years ending 31 March 2021. In addition, INPI will expand the target technical field of the PPH with effect from 1 April 2019.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 Feb 2019
 
Japan, Brazil Full text
 
 
 
 
 
KIPO becomes ISA/IPEA for UAE
 
The International Center for Patent Registration, Ministry of Economy (United Arab Emirates) has specified the Korean Intellectual Property Office (KIPO) as a competent International Searching Authority (ISA) and an International Preliminary Examining Authority (IPEA) for international applications filed by nationals and residents of the United Arab Emirates with the International Bureau as receiving office with effect from 6 January 2019.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 Feb 2019
 
United Arab Emirates Full text
 
 
 
 
 
Trademarks (8)
 
 
Madrid e-filing service opened for Austrian trademark owners
 
The Austrian Patent Office is now offering the Madrid e-filing service to its trademark holders who want to protect their marks abroad.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 Feb 2019
 
Austria Full text
 
 
 
 
 
Austria offers trademark protection to animated logos
 
The Austrian Patent Office has recently started accepting applications for registering animated logos as trademarks, and a fully digitised system has been introduced for this purpose.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 Feb 2019
 
Austria Full text
 
 
 
 
 
Canada to introduce new trademark law in June
 
Canada is set to enforce its new trademark law, which is expected to make the application process easier and more flexible, with effect from 17 June 2019.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 Feb 2019
 
Canada Full text
 
 
 
 
 
Ethiopian IPO goes digital with online trademark filing system
 
The Ethiopian IP Office (EIPO) registry has recently launched an online trademark filing system in collaboration with the World IP Organisation (WIPO).
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 Feb 2019
 
Ethiopia Full text
 
 
 
 
 
Irish Patent Office to accept non-traditional marks
 
The Irish Patents Office has recently upgraded its trademark e-filing system to accept non-traditional marks
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 Feb 2019
 
Ireland Full text
 
 
 
 
 
Moroccan trademark owners can now file suspension applications with customs authorities
 
Morocco has started allowing owners of trademarks registered in Morocco, or registered internationally with designating Morocco, to record their suspension applications with the customs authorities requesting the seizure or suspension of any counterfeit products that bears the trademark
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 Feb 2019
 
Morocco Full text
 
 
 
 
 
Madrid Protocol fees announced for Samoa
 
Based on the provisions of the Common Regulations under the Madrid Agreement and Protocol Concerning the International Registration of Marks and after consultation with the Office of Samoa, the Director General of the World Intellectual Property Organization has on 1 February 2019 announced the individual fees, in Swiss francs, payable when Samoa is designated in an international application or in an application for renewal of international registration
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 Feb 2019
 
Samoa Full text
 
 
 
 
 
TIPO releases modified classification of goods and services
 
The Taiwan Intellectual Property Office (TIPO) recently released modified classification of goods and services based on the 2019 version of the eleventh edition of the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification) published by the World Intellectual Property Organization (WIPO)
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 18 Feb 2019
 
Taiwan Full text
 
 
 
 

Cases

 
Copyright (1)
 
 
European Union: Levola v Smilde, European Court of Justice (ECJ), C-310/17, 13 November 2018
 
The Court of Justice of the European Union (CJEU) ruled on a series of questions referred by the Arnhem-Leeuwarden Appeals Court (Netherlands), relating to the possible copyright protection of the taste of a cheese product. The CJEU confirmed that the concept of a “work” provided for in Directive 2001/29 requires the existence of an external expression identified in a sufficiently accurate and objective manner, which does not occur in the case of a taste. In short, it is impossible to objectively and accurately define the subject matter of protection, leading to legal uncertainty, which determines that a flavour cannot be classified as an intellectual work.
 
Author(s): Patricia Mariscal Garrido-Falla, Elzaburu, Madrid
 
Source: Kluwer Copyright CasesDate: 18 Feb 2019
 
European Union Full text Full text as PDF
 
 
 
 
 
Patent (11)
 
 
Germany: Entdeckung biologischer Zusammenhänge, Federal Court of Justice of Germany, X ZR 118/16, 02 October 2018
 
If a patent only provides the skilled person with a general scientific explanation as to why the procedure disclosed therein is suitable for the purpose in question and does not disclose a new technical teaching in relation to this purpose, but merely a discovery of biological correlations, then this is insufficient to acknowledge novelty (continuation of BGH, judgment of 9 June 2011 - X ZR 68/08, GRUR 2011, 999 marginal 44 - Memantine).
 
Author(s): Thorsten Bausch, Hoffmann Eitle, Munich; Bernd Kröger, Hoffmann Eitle
 
Source: Kluwer Patent CasesDate: 18 Feb 2019
 
Germany Full text Full text as PDF
 
 
 
 
 
USA : Rehco LLC v. Spin Master, Ltd.,, United States Court of Appeals, Federal Circuit, No. 17-2589, 04 February 2019
 
Settlement over audit did not preclude suit for unpaid royalties because product at issue was not included in audit. In addition, toy maker could have infringed patent under proper claim construction.
 
Author(s): Brian Craig
 
Source: IP Law Daily - Selected US CasesDate: 18 Feb 2019
 
Reporter for:
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA : In re Google LLC, United States Court of Appeals, Federal Circuit, No. 18-152, 05 February 2019
 
Appeals court declines to decide en banc whether servers in third-party facilities constitute "regular and established place of business" under patent venue statute.
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 Feb 2019
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA : Sanofi Mature IP v. Mylan Laboratories Ltd., United States Court of Appeals, Federal Circuit, No. 18-1203, 05 February 2019
 
Treating the preamble of the proposed patent claim as non-limiting was error. On remand, the Board was directed to treat the preamble as an additional limitation of the proposed claim.
 
Author(s): Nicholas Kaster
 
Source: IP Law Daily - Selected US CasesDate: 18 Feb 2019
 
Reporter for:
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA : Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, United States Court of Appeals, Federal Circuit, No. 17-2508, 06 February 2019
 
The claims at issue were directed to the natural law of naturally-occurring antibodies and the neurological disease, and did not add an inventive concept that would have transformed them into patent eligible subject matter.
 
Author(s): Peter Reap, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 Feb 2019
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA : Booking.com B.V. v. USPTO, United States Court of Appeals, Fourth Circuit, No. 17-2458, 04 February 2019
 
The USPTO failed to establish that Booking.com was a generic term for hotel reservation services, rather than a descriptive term that has acquired secondary meaning in the minds of consumers.
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 Feb 2019
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA : Momenta Pharmaceuticals, Inc. v. Bristol-Myers Squibb Co., United States Court of Appeals, Federal Circuit, No. 17-1694, 07 February 2019
 
After terminating development of a competing drug, Momenta Pharmaceuticals no longer had standing to appeal a ruling by the PTAB that sustained a patent for treating rheumatoid arthritis. The appeal was also moot.
 
Author(s): Peter Reap, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 Feb 2019
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA : Voit Technologies, LLC v. Del-Ton, Inc., United States Court of Appeals, Federal Circuit, No. 18-1536, 08 February 2019
 
Claims for a patent asserted by Voit Technologies against Del-Ton for "a method of buying and selling an item" through the Internet were directed to an abstract idea and lacked any inventive concept that would transform it into patent-eligible subject matter.
 
Author(s): Brian Craig
 
Source: IP Law Daily - Selected US CasesDate: 18 Feb 2019
 
Reporter for:
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA : Continental Circuits LLC v. Intel Corp., United States Court of Appeals, Federal Circuit, No. 18-1076, 08 February 2019
 
A district court erred in reading a "repeated desmear process" limitation in patent claims relating to circuit boards and by failing to give the asserted claims their plain and ordinary meaning. The district court’s judgment of noninfringement was vacated.
 
Author(s): Brian Craig
 
Source: IP Law Daily - Selected US CasesDate: 18 Feb 2019
 
Reporter for:
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA : IBG LLC v. Trading Technologies International, Inc., United States Court of Appeals, Federal Circuit, No. 2017-1732, 13 February 2019
 
Four patents held by Trading Technologies International were not eligible for covered business method review because they are for technological inventions. Thus, rulings made by the PTAB on the patents while performing covered business method reviews were vacated.
 
Author(s): Peter Reap, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 Feb 2019
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA : CenTrak, Inc. v. Sonitor Technologies, Inc., United States Court of Appeals, Federal Circuit, No. 17-2510, 14 February 2019
 
A district court erred in granting summary judgment to the defending provider on the grounds that the asserted claims were invalid for lack of written description and were not infringed by the provider’s system.
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 18 Feb 2019
 
United States of America Full text Full text as PDF
 
 
 
 
 
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