Newsletter March 2021

Two Special Announcements

News Round-Up

Articles & Case Notes:

AIPPI National and Regional News:

Special Announcement 1: 2021 AIPPI Elections.

Invitation to present nominations for members of the Bureau and Statutory Committees

The National and Regional Groups are invited by the Bureau of AIPPI to present nominations for candidates for the Bureau and the Statutory Committees. The invitation has been sent to the Presidents and Secretaries of your National and Regional Groups on 15 March 2021.

The Nominating Committee wishes to inform all AIPPI members by way of this AIPPI e-news article about the elections 2021 for the Bureau and for our Statutory Committees.

The following Bureau positions are to be voted this year:

  • Secretary General,
  • First Deputy Secretary General,
  • Second Deputy Secretary General and

In the Statutory Committees, the following positions are or will become vacant this year:

Membership Committee: three new members

Venue Selections Committee: one new member

Communications Committee: one new member

Nominating Committee: three new members

Special Announcement 2: Japanese Group's Journal "A.I.P.P.I." Now Available to All Members of AIPPI.

Since 1965, the Japanese Group has published its bimonthly journal "A.I.P.P.I." in English for the purpose of disseminating information on the Japanese intellectual property system to foreign countries. We have started to publish it in an e-journal format from the January 2021 issue (Vol 46, No.1).

To mark this occasion, we have also decided to make it accessible to AIPPI members in other countries. AIPPI members can read the entire issue online (not available for download or print).

A link was sent to AIPPI members in the March 2021 eNewsletter mailing. Issues are also available to read in the "Members Offers" section of the Members Area of the AIPPI website once you have logged in.

We will inform you in the AIPPI Newsletter each time we publish the latest issue.

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

Masatoshi ABE, AIPPI JAPAN

Case law database regarding TRIPS. Introduction to TRIPS Case Law Digest and a representative example.

By Victor Garrido and Takeshi S Komatani (Vice Chair) of the AIPPI TRIPS Standing Committee.

Our TRIPS Standing Committee has collaborative projects with a number of entities and committees including external entities such as WTO. At this time, we are introducing one of these collaboration activities: TRIPS Case Law Digest. This project is to create a database including prospective case law collection, intended to be freely available, and can enable a more comprehensive analysis of existing jurisprudence, including the identification of conflicts, convergences, or other notable trends. We aim to create and maintain a collection of national jurisprudence which refers to or relies on TRIPS provisions when interpreting and applying domestic intellectual property law, in collaboration with partner institutions around the world, with strong assistance by the WTO. Once the collection has reached a critical mass, the WTO Secretariat will develop the appropriate means to make it available to users while recognizing the valuable contribution of participating partner institutions, notably AIPPI.

 

Value generation and business growth through IP protection: the new challenge for the AIPPI Italian group.

By Alessandra Vitagliano, Head of the Italian AIPPI Companies Group.

How to approach and be relevant for business ventures aiming for successful competition in global markets.

Why the Italian AIPPI Companies Group was born and how it operates in challenging times.

 

UAE: Major Amendment to the GCC Patent Law approved by GCC Supreme Council.

By Motasem Abu-Ghazaleh & Bassel El Turk of AIPPI UAE, Communications Committee.

On 5 January 2021 the GCC Supreme Council approved the Amended Patent Law (Regulation) for the Gulf Cooperation Council (GCC).

While the amended GCC Patent Law has yet to be made available to the public, as of 6 January 2021, the GCC Patent Office will no longer accept new applications, i.e. IP holders can no longer choose to file “one application” covering all 6 GCC members.

 

First Ever Preliminary Injunction Issued by a Chinese Court in Pharmaceutical Patent Case.

By Yi Lu and Gary Zhang of China Sinda Intellectual Property, Beijing, China.

Astellas Pharma v. Zhejiang Hisun Pharmaceutical Co., Ltd.  Jing 73 Xingbao No.1(2019)

The Beijing IP Court issued a preliminary injunction against a patent infringer in a pharmaceutical case at the end of 2019. As far as we know, this is the first time that such an injunction has been ordered by a Chinese court in a pharmaceutical patent case.

As we briefly discuss below, the case will have huge implications, not only for the pharmaceutical industry, but for patent protection and enforcement in general in China.

 

Google reaches agreement with French press publishers over newly enacted European copyright-related right.

By Tougane Loumeau. Co-National Group Reporter of the French Group of AIPPI, Lawyer at Gide, Paris, France.

On 21 January 2021, APIG (an association representing the interests of French daily news publishers covering about 300 press titles) announced a framework agreement with Google on the remuneration of its members for the news links and snippets retrieved by the Google search engine. This follows the pronouncement on 9 April 2020, of an injunction against Google by the French competition authority, requiring Google to conduct negotiations in good faith with publishers and news agencies on the remuneration for the re-use of their protected content. The injunction was confirmed by the Paris Court of Appeal on 8 October 2020.

 

Agreement between the Commerce Ministry’s Department for Promotion of Industry and Internal Trade (DPIIT) of India and the United States Patent and Trademark Office (USPTO).

By Mr. Omkar Acharya & Ms. Priya Mehta of H K ACHARYA & COMPANY, India.

The Department for Promotion of Industry and Internal Trade (DPIIT), Ministry of Commerce and Industry, signed a Memorandum of Understanding (MoU) on 2 December 2020, in the field of Intellectual Property Cooperation with the United States Patent and Trademark Office (USPTO), Department of Commerce of the United States of America. As per an official announcement, the DPIIT Secretary, Under Secretary of Commerce for Intellectual Property and the Director of USPTO conducted a virtual signing ceremony for the MoU.

 

New Rules for Paying Employees Remuneration for Inventions came into force in Russia on January 1, 2021.

By Irina Ozolina, Moscow, Russia.

The Russian Government, on 1 January 2021, introduced new Rules about the amount of inventorship remuneration to be paid by employers to their inventors - employees by default (that is, in case there is no agreement between the employer and employee to the contrary). The amounts are comparatively high, which should be a reason for employers in Russia to pay closer attention to the internal policies on this matter. At the same time, from 1 January 2022, the employer will be obligated to offer to assign his patents to the inventor-employee free of charge, in cases where the employer is going to early terminate a pending patent for an invention created during employment.

Pakistan joins the Madrid Protocol.

By Vikrant Rana of S.S. Rana & Co, India.

On 24 February 2021, the Government of the Islamic Republic of Pakistan deposited its instrument of accession to the Madrid Protocol with WIPO’s Director General. The Madrid Protocol will enter into force for the Islamic Republic of Pakistan on May 24, 2021.

The Japanese IP High Court held that an invention with regard to Electronically Recorded Monetary Claims is not eligible.

By HORIUCHI Kazunari of Kubota, Tokyo, Japan.

The IP High Court held that an invention entitled "method for settling Electronically Recorded Monetary Claims and a claim management server” does not meet the requirement of an invention (Article 2 (1) of the Patent Act) on the ground that its essence is exclusively directed to an arbitrary arrangement and does not utilize the laws of nature on nature's phenomena or order and therefore the invention is not a “creation of technical ideas utilizing the laws of nature” (IP High Court No. 2019 (gyo-ke) 10110, judgment issued on 18 June 2020).

Guidance from China's Supreme Court in light of punitive damages on intentional IPR infringement.

By Ji Liu, of CCPIT Patent and Trademark Law Office, Beijing, China.

A quick glance at the newly issued Judicial Interpretation from China’s Supreme People's Court on how punitive damages apply to IPR infringement cases. The new rules are believed to be more friendly to the plaintiff and operability is more prominent.

 

Conflicting composition marks ruling in India.

By Dr. Malathi Lakshmikumaran, of of Lakshmikumaran & Sridharan, India.

The Division Bench of the Madras High Court vide its order dated 2 February 2021 set aside the order dated 6 August passed by the Ld. Single Judge whereby an interim injunction was granted in favour of Arudra Engineers Pvt. Ltd. (Respondent) and against Pathanjali Ayurved Ltd. (Appellant). By way of the impugned order the Appellant was restrained from using the trademark “CORONIL” and/or deceptive variations thereof in relation to their product/business in any manner until the disposal of the suit. The Appellant was also directed to pay costs of 500,000 INR.

 

New Board for AIPPI Mexico

We are glad to inform you the new Board of the Mexican Association for the Protection of Intellectual Property (AMPPI) was sworn in on 18 February 2021.

 

Sarah Matheson on the Australia Day 2021 Honours List

By Nina Fitzgerald, AIPPI Australia National Group Reporter.

The Australian AIPPI committee wishes to congratulate their Vice President, Sarah Matheson, on her recent recognition in the Australia Day 2021 Honours list.  Sarah has very deservedly been recognised as a Member of the Order of Australia by the Governor General of Australia. The Order of Australia recognises Australians who have demonstrated outstanding service or exceptional achievement. Sarah was bestowed with the award “For significant service to the law, to intellectual property protection, and to the not for profit sector.”

 

Sarah Matheson (AM)

Sarah Matheson (AM)

The AIPPI Belgian Group held a lunch webinar on recent Trade Secrets case law on 11 February 2021

By Simone Vandewynckel, National Group Reporter, AIPPI Belgium.

The AIPPI Belgian Group held an online lunch webinar on 11 February 2021, on trade secrets litigation. The title of the presentation was: "Litigation, evidence and trade secrets: what’s new? A cross view from practitioners with an insight in recent case law". The speakers were two Belgian attorneys-at-law, Ms. Liesbeth Weynants and Ms. Sophie Lens.

2021 02 11 photo slide

AIPPI – French Group News

By Laurence Loumes, AIPPI France, Co-National Group Reporter.

 

• Patents – Artificial Intelligence – Sufficiency of disclosure & Inventive Step

The committee led dynamically by Pauline Debré & Marc Névant went straight to work! With 3 meetings already held, the group composed of over 25 members started to tackle the questions. First, a review of the questions was done collectively to ensure that we all had the same understanding of the questions and not duplicate our answers. Second, a subcommittee was formed to address the specific questions regarding the current state of law. Two other subcommittees are planed: one for sufficiency of disclosure and the other for inventive step. Finally, a cursory technical brief on AI algorithms has been kindly provided by a patent attorney and an invited guest who both hold a PhD in that technical area. The mix of technical and legal backgrounds in the group provides it with even more strength.

AIPPI – News from Honduras

By Blanca Mejia, AIPPI CA-Caribbean Regional Group, Co-Group Reporter.

 

Updates from Honduras:

The submission by electronic means of applications for Distinctive Signs and Electronic Signature has been enabled as of Monday, 27 April 2020 via email.

Trilateral Seminar of the French, Polish and German National Groups

By Jan Dombrowski, AIPPI Germany, Secretary.

 

On 22 April 2021, the traditional trilateral seminar of the French, Polish and German National Groups will take place as an online meeting to inform our members about current developments and case law in IP in these three countries. The seminar already has a long tradition and has taken place in Poland, France or Germany in alternating 2-year intervals.

 

AIPPI – Dominican Republic News

By Leandro Corral, AIPPI CA-Caribbean Regional Group, Co-Group Reporter.

 

First Collective Trademark

On 1 February 2021, the National Industrial Property Office (ONAPI) registered the collective trademark “Dom Tropical Avocado from Dominican Republic”, the first collective trademark to market this product to the United States. The owner of said trademark is the Dominican Association of Exporters (ADOEXPO). Agroindustria Ocoeña, AMR Agro, Exportadora Tavarez and Grupo 33 are the first four Dominican companies that will use this “collective brand” whose intention is to support the production of this fruit, promote the nutritional richness of the product and validate the quality and origin in other markets.

AIPPI – News from Guatemala

By Santiago Mayoral, AIPPI CA-Caribbean Regional Group, Guatemala.

 

New PTO digital portal

As from November, 2020 all users may effectuate payments of “official fees” through a new PTO digital portal where “vouchers” are first generated and thereafter paid in the Bank portal.

 

AIPPI Paraguayan Group Update

By Lorena Mersan, National Group Reporter for AIPPI Paraguay.

 

First certificate of registration for a designation of origin issued

On 11 March 2020, the National Office of Intellectual Property (DINAPI) issued the first certificate of registration for a designation of origin (DO) to the Interprofessionnel du Vin de Champagne Committee. It is the first application that concludes the entire preliminary recognition and registration process established in Law Nº 4923/2013 regulated in 2019 by Decree Nº 1286.

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