Newsletter August 2021

Journal Announcement

News Round-Up

Articles & Case Notes:

AIPPI National and Regional News:

Japanese Group's Journal "A.I.P.P.I." Latest Issue (Vol 46, No.3) is Now Available.

The Japanese Group is pleased to inform you that the May 2021 issue (Vol 46, No.3) of the Japanese Group's Journal "A.I.P.P.I." is now available to all AIPPI members.

Please sign in to the “Membership Portal” on the AIPPI website and visit “Member Offers” to read the current and past editions of the journals.

Since 1965, the Japanese Group has been publishing its bimonthly journal "A.I.P.P.I." in English for the purpose of disseminating information on the Japanese intellectual property system to the foreign countries.

AIPPI members can read the entire issue online (not available for download or print).

We hope that many AIPPI members around the world will find it interesting.

Back issues are also available to read in the Members Area of the AIPPI website.

Masatoshi ABE, AIPPI JAPAN

Canada Announces Measures to Speed Up Trademark Examination.

By Anthony Prenol and Antonio Turco of CPST Intellectual Property.

In recent years, the length of time that it takes the Canadian Intellectual Property Office (“CIPO”) to examine a trademark application has grown dramatically, so much so that it now typically takes more than 2 years after the filing of an application for CIPO to examine it.  In order to address its steadily-worsening backlog, CIPO has announced some changes, effective as of May 3, that it hopes will speed up the process and provide some relief to applicants who are suffering prejudice owing to CIPO’s delays.

BREAKING NEWS: Australian court rules that artificial intelligence can be an inventor.

By Richard Hamer, Lauren John & Alexandra Moloney, of Allens, Australia

Can an artificial intelligence (AI) system be named the inventor of a patent? An Australian court says ‘yes’. The decision in Thaler v Commissioner of Patents [2021] FCA 879 is the first judicial determination in the world in favour of AI systems being named as inventors of a patent. The availability of patent protection for AI-generated inventions is a vexed and controversial issue. As AI is increasingly contributing to research and development efforts, the decision will have significant ramifications for stakeholders across a wide range of industries.

 

India: Trademark Applications Cross the 5 Million Mark!

By Mr. Vikrant Rana of S.S. Rana & Co.

We are thrilled to share the news that the number of trademark applications filed in India has crossed the 5 million mark!

Patent box for Australia

By Tommy Chen, Lauren John & Tony Shaw, of Allens, Australia.

The Australian federal government has announced funding for a 'patent box' tax incentive scheme. The government has pledged just over AUD 200 million for the scheme, and it will aim to spur investment in medical and biotech innovation in Australia. Income derived from new Australian medical and biotech patents, where the patented technology derives from research and development (R&D) that took place in Australia, will be taxed at a concessional tax rate of 17%. This is significantly lower than the 30% standard corporate income tax rate, or the 25% rate for small and medium enterprises.

 

Intellectual Property in the UK following Brexit (May 2021)

By Edward Cronan, of Hogarth Chambers, London, United Kingdom.

The UK and European legal community continue to adjust to the consequences of the new legal order in Europe following Brexit. The initial administrative tasks in relation to the duplication of registers of registered rights (trade marks and community registered designs) by the UKIPO appear to have been successful. Rightsholders are continuing to adapt to changes in the rules in relation to exhaustion, affecting parallel imports, and also changes to the jurisdictional regime.

The UK Courts have shown preliminary signs that they are unlikely to depart from EU law in order to return to pre-existing UK legal approaches, in particular in a recent decision by the Court of Appeal in relation to copyright law. In patents, it is business as usual for UK and EU practitioners. However, for Supplementary Protection Certificates (“SPCs”) the regulatory divergence between Northern Ireland and the remainder of the UK has created an additional administrative burden arising from the bifurcation of the UK regime for marketing authorisations.

 

A union of French traditional cheese producers contributes to European law on protected geographical designations and indications.

By Tougane Loumeau, AIPPI (France) Co-Group Reporter. Lawyer at Gide, Paris, France.

On 14 April 2021, the French Supreme Court issued its decision in a long-standing case concerning the protection of morbier, a French cheese named after a village in the Jura mountains region. Morbier cheese benefits from the European ‘Protected designation of origin’ (PDO) regime, which protects agricultural products whose qualities are specifically and strongly linked to their area of production, against appropriation for similar products that do not comply with the specification for the PDO. The case gave rise to a reference for a preliminary ruling to the EU Court of Justice (CJEU), on whether PDO protection may cover the shape and appearance of a product.

Anti-Enforcement Injunction by Indian Court Follows Anti-Suit Injunction by Chinese Court

By Mr. Ashwani Balayan, of ALG India Law Offices LLP.

In the matter of Interdigital Technology Corporation and Ors. v. Xiaomi Corporation and Ors. [CS(COMM) 295/2020], the High Court of Delhi [Hari Shankar, J.] in India, on May 3, 2021 granted an anti-enforcement injunction order against the defendants - Xiaomi Corporation and Ors. (Xiaomi), restraining them from enforcing in India the anti-suit injunction obtained by them from a court in Wuhan in China against the plaintiffs - Interdigital Technology Corporation and Ors. (Interdigital). This is a Case Note of the aforementioned order.

 

Establishment and Implementation of a Patent Linkage System in China.

By Dr. Fei Kou, of NTD Intellectual Property Attorneys, Beijing, P.R. China.

In the 4th Amendments to the Chinese Patent Law which came into force on 1 June 2021, a patent linkage system was introduced, and industry and IP professionals are all watching and waiting for the implementing regulations of this system. Here are the judicial interpretations and implementing measures.

 

The Madras Bar Association in India raises concerns about the Tribunals Reforms Ordinance

By Dr. Mohan Dewan, Principal, RK Dewan & Co. and Adv. Aboli Kherde, Legal Associate, RK Dewan & Co, Pune, India.

The Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021 was promulgated on April 4, 2021. On April 23, 2021, the Madras Bar Association approached the Supreme Court challenging the constitutional validity of the Tribunals Reforms (Rationalization and Conditions of Service) Ordinance, 2021.

 

United Kingdom’s Court of Appeal refuses to depart from CJEU jurisprudence on communication to the public: TuneIn v Warner Music

By Edward Cronan, of Hogarth Chambers, London, United Kingdom. Co-authored by Jack Rigelsford.

The European legal community has been faced with uncertainty caused by the UK’s departure from the EU. One ‘unknown’ has been the extent to which UK law in relation to intellectual property will diverge from EU law following Brexit. In its recent decision in TuneIn Inc v Warner Music UK Limited and Sony Music Entertainment UK Limited [2021] EWCA Civ 441, the Court of Appeal for England and Wales in the UK has rejected arguments that the UK should depart from the CJEU’s copyright jurisprudence on “communication to the public”.

Guest news: 2021 European Inventor Award Winners Announced

The 2021 European Inventor Award has come and gone, and each winner now has a coveted trophy on their shelf. This year's Award ceremony, held for the first time as a digital event, was entirely open to the public, who tuned in from around the world as the winners were revealed. The European Patent Office (EPO) also made a major announcement during the ceremony: the new Young Inventors prize for innovators aged 30 and under.

 

Will a Japanese version of Amicus Brief work well for Patent Litigation?

By Kozo YABE, of Yuasa and Hara, Tokyo, Japan.

On May 14, 2021, an amendment of the Patent Act and others was finally passed by the Diet.  It adopted the Amicus Brief system. This is the first time to install this kind of system whereby the court can call opinions from non-litigant/parties having legal interests in a Japanese civil procedure of litigation, despite a similar practical attempt held during the Apple vs. Samsung case of the IP High Court (Judgment of Heisei 25(Ne) No.10045 case rendered on May 16, 2016). The Amendment was promulgated on May 21, 2021 and will be effective within one year from the date of promulgation as designated by the administrative ordinance.

 

PCT: Italy has opened the National Route

By Ferruccio Postiglione, Member of the AIPPI Standing Committee on IP Office Practice and Procedure.

According to the Ministerial Decree dated 13.11.2019, art. 1, is now possible to enter the Italian phase directly from the Patent Cooperation Treaty (PCT). Prior to the issuance of said Decree, the national route was not possible for Italy. It was necessary to file a European patent application and subsequently validate the European patent in Italy. The possibility to directly enter Italy applies to PCT patent applications filed on or after 1 July 2020, designating or electing Italy. The Italian PTO has issued a Notice (Circolare No. 610; 02-07-2020) clarifying the procedure for entering the Italian phase.

PCT filings during the first year of the COVID-19 pandemic continue to grow – but for how long?

By Jim Boff, Dietmar Haug and Gastón Richelet of the AIPPI PCT Committee.

On March 2, 2021, WIPO released its 2020 PCT report with data concerning the system´s usage during the past year. The full report can be accesses at Innovation Perseveres: International Patent Filings via WIPO Continued to Grow in 2020 Despite COVID-19 Pandemic

Introduction to IP and Genetic Resources: Recent Developments at the International Level

This is the first webinar of a series on genetic resources, and will explore what GRs are, their relevance to Intellectual Property, the competing policy imperatives that form the backdrop to the economic exploitation of genetic resources, the international frameworks that are intended to govern access to and sharing of benefits from the utilisation of GRs, and the practical challenges that lie in the way of their implementation. In particular, integrated rights management for IP and genetic resources as well as requirements of disclosure and prior informed consent are discussed.

The AIPPI French Group held a life sciences webinar

By Laurence Loumes, Plasseraud IP.

The AIPPI French Group held a special webinar focused on hot topics in life sciences in cooperation with LES and ASPI on June 3, 2021. The event attracted over 150 participants.

 

AIPPI Poland takes a stand on the recent personnel changes at the IP court in Warsaw By Bartosz Krakowiak, President AIPPI Poland

On 1 July 2020, the long-awaited system of specialized IP courts started operating in Poland. The system was introduced as part of a reform which additionally brought to the Code of Civil Procedure some important new procedures applicable to IP-related disputes, aimed at better alignment of the Polish legal system with the requirements of the EU Enforcement Directive (2004/48/EC). The governmental and parliamentary work on the reform had been supported by various business organisations and professional associations, including the Polish National Group of AIPPI (AIPPI Poland).

AIPPI CA-Caribbean Regional Group - news from Honduras

By Blanca Mejia, Spokesperson, AIPPI CA-CARIB.

The Secretary of State in the Offices of the Interior, Justice and Decentralization, and the Orange Economy Commission of Honduras signed a cooperation agreement aimed at producing new policies and regulatory frameworks in various municipalities of the country, in which production stands out, as well as artistic and cultural creations and manifestations.

 

Andean decision on the common regime

By Maria del Carmen Arana Courrejolles, National Group Reporter, AIPPI Peru.

Decision 876 of 2021 establishes the common regime of the country brand. The purpose of this regime is the use of the country brand made by the members of the Andean Community: Bolivia, Colombia, Ecuador and Peru to promote their different business sectors as well as their identity and positive image.

Young AIPPI Members (YAM): A Call to Connect!

By Debbie David, Chairperson of YAC and Samantha Yung, Vice-chairperson of YAC.

The Young AIPPI members Advisory Committee (YAC) was formed to explore more ways to connect with and interact with Young Members throughout the year, through various initiatives and activities that have been planned.

If you are a Young Member (defined as aged 36 or below), or are not quite in this definition but are keen to be involved in the development of Young Members, do read on to find out more and connect with us!

 

The UAE Cabinet approves accession to the Madrid Protocol system

By Munir Suboh, of the AIPPI UAE Communications Committee.

 

The UAE recently announced its decision to join the Madrid Protocol for trademark registration and they plan to complete the process by the end of 2021/early 2022. This accession has been discussed throughout the years and there were many different views on the cons and pros to enter the system.

 

Annual IP-NGO Coordination Meeting

By Diarmuid De Faoite, AIPPI Communications Manager.

 

On June 9, 2021, the annual IP-related Non-Governmental Organization (NGO) Coordination Meeting took place via videoconference in view of ongoing COVID-19 restrictions. This meeting, organized by AIPPI-International, is a welcomed opportunity for IP-related NGOs to share experiences and identify paths for coordinating addressing of IP issues and furthering harmonization.

 

News from the Dominican Republic and the Caribbean

By Leandro Corral, National Group Reporter, AIPPI CA-CARIB.

 

In April, 2021, the National Industrial Property Office (ONAPI) delivered the renewal of the collective trademark IMBERLITA, owned by the Petrified Wood Craftsmen Association. The certificate was delivered at the Petrified Wood Craft Plaza. This renewal supports the effort of artisans and their protection working with Petrified Wood. The brand has local and international recognition.

AIPPI Italian Group's exploration of the usefulness of mediation in IP dispute resolution

By Simona Lavagnini, of LGV, Milan, Italy.

 

The group trained members on voluntary mediation but spoke out against the extension of mandatory mediation in the IP sector

 

The First Ever Patent Congress in Russia

By Pavel Guerman, National Group Reporter for AIPPI Russia.

 

Technology is the basis of progress fed by inventions. Inventions need to be patented to warrant satisfaction of the inventors. Russia is a popular venue for patenting inventions. Thousands of patent applications are filed every year, something that is on the rise. Local small-scale events are occasionally organized to draw the attention of the public to the importance of patenting inventions. However there has never been an event organized that would attract an audience from all sectors of industry and people from other countries.

 

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