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What will the future bring in the field of Intellectual Property? Are you prepared for the new digital world? Watch the webinar for more insights on the impact of the trend developments on the IP practice.

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What will the future bring in the field of Intellectual Property? Are you prepared for the new digital world? Watch the webinar for more insights on the impact of the trend developments on the IP practice.

 Watch now!

fmelchiors@dennemeyer.com Read more

This webinar provides tools for you to develop a meaningful trademark renewal RFP. You will learn tips to structure your RFP to get the result you want - a quality provider at a fair price.

 Watch now!

This webinar provides tools for you to develop a meaningful trademark renewal RFP. You will learn tips to structure your RFP to get the result you want - a quality provider at a fair price.

 Watch now!

English Trademarks lsteinberg@dennemeyer.com Read more

This webinar provides tools for you to develop a meaningful patent annuity RFP. You will learn tips to structure your RFP to get the result you want - a quality provider at a fair price.

 Watch now!

This webinar provides tools for you to develop a meaningful patent annuity RFP. You will learn tips to structure your RFP to get the result you want - a quality provider at a fair price.

 Watch now!

lsteinberg@dennemeyer.com Read more

Can you really recoup up to 100% of the PCT and EP search procedures costs? Yes, you can.

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Can you really recoup up to 100% of the PCT and EP search procedures costs? Yes, you can.

 Watch now!

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Discover how you can cost effectively transfer intellectual property rights post-M&A. Ensure your companies intellectual property rights are protected.

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Discover how you can cost effectively transfer intellectual property rights post-M&A. Ensure your companies intellectual property rights are protected.

 Watch now!

lsteinberg@dennemeyer.com Read more

While an increasing number of Patent Prosecution Highway (PPH) cooperation programmes are being established between different patent offices, enabling patent applicants to request fast-track examination procedures, many companies continue to face challenges in finding the right balance between cost and quality in the foreign filing process. This paper analyses companies’ options and considers some of the issues raised by foreign prosecution.

What are the challenges when seeking to obtain patent protection in different countries?

When seeking to protect their inventions overseas, companies should ask themselves a series of questions:

  • In what countries is it worthwhile obtaining protection?
  • What schemes will be used for filing (eg, individual filing in each country, regional application, Patent Cooperation Treaty (PCT))?
  • What is the financial commitment?
  • How can the highest level of protection be obtained at the lowest cost?

The costs associated with foreign filing tend to be quite high and unpredictable. For companies with a limited budget for patents, such as start-ups, certain strategies can be implemented to help manage the financial burden of foreign filing. One such strategy is delaying costs (generally for up to 30 months after the first priority filing date) and using the time gained to assess the probability of commercial success of the invention in particular countries before filing national-phase patent applications in those countries under the PCT framework.

The tedious formalities which must be completed, the high number of invoices and inefficiencies in workflows make foreign filing a time-consuming process. The challenge is to find a way to manage the process more intelligently and optimise communication in order to obtain better results in a shorter time.

What are some of the trends in foreign filing in 2014?

The number of applications filed overseas continues to increase as a consequence of globalisation. At the same time, in countries that are experiencing economic development (eg, South Korea, China and Brazil), the number of initial national filings is increasing, which in turn will lead to more filings abroad.

On the other hand, IP service providers are beginning to operate in the area of foreign filing, offering services such as national phase entry after PCT and European patent validations.

A better approach is to focus not just on filing, but rather on the complete process, from filing through prosecution to grant. The question to ask is: what is the best way to deliver both filing and the final result – the granted patent – to applicants?

This article first appeared in the IAM Yearbook: Building IP value in the 21st century, a supplement to Intellectual Asset Management (IAM), published by The IP Media Group. To view the guide in full, please go to www.iam-magazine.com

While an increasing number of Patent Prosecution Highway (PPH) cooperation programmes are being established between different patent offices, enabling patent applicants to request fast-track examination procedures, many companies continue to face challenges in finding the right balance between cost and quality in the foreign filing process. This paper analyses companies’ options and considers some of the issues raised by foreign prosecution.

What are the challenges when seeking to obtain patent protection in different countries?

When seeking to protect their inventions overseas, companies should ask themselves a series of questions:

  • In what countries is it worthwhile obtaining protection?
  • What schemes will be used for filing (eg, individual filing in each country, regional application, Patent Cooperation Treaty (PCT))?
  • What is the financial commitment?
  • How can the highest level of protection be obtained at the lowest cost?

The costs associated with foreign filing tend to be quite high and unpredictable. For companies with a limited budget for patents, such as start-ups, certain strategies can be implemented to help manage the financial burden of foreign filing. One such strategy is delaying costs (generally for up to 30 months after the first priority filing date) and using the time gained to assess the probability of commercial success of the invention in particular countries before filing national-phase patent applications in those countries under the PCT framework.

The tedious formalities which must be completed, the high number of invoices and inefficiencies in workflows make foreign filing a time-consuming process. The challenge is to find a way to manage the process more intelligently and optimise communication in order to obtain better results in a shorter time.

What are some of the trends in foreign filing in 2014?

The number of applications filed overseas continues to increase as a consequence of globalisation. At the same time, in countries that are experiencing economic development (eg, South Korea, China and Brazil), the number of initial national filings is increasing, which in turn will lead to more filings abroad.

On the other hand, IP service providers are beginning to operate in the area of foreign filing, offering services such as national phase entry after PCT and European patent validations.

A better approach is to focus not just on filing, but rather on the complete process, from filing through prosecution to grant. The question to ask is: what is the best way to deliver both filing and the final result – the granted patent – to applicants?

This article first appeared in the IAM Yearbook: Building IP value in the 21st century, a supplement to Intellectual Asset Management (IAM), published by The IP Media Group. To view the guide in full, please go to www.iam-magazine.com

mkoellner@dennemeyer-law.com Read more

When looking for safe and effective means to reduce costs for obtaining patent rights in Europe, applicants should consider the following aspects:(i) a Search Report with a Written Opinion prepared by the European Patent Office (EPO) can be obtained through a Luxembourgish patent application, and (ii) The EPO partly or fully refunds its search fees if in a subsequent European Patent Application or PCT application (ISA = EPO) the priority of an earlier Luxembourgish patent application with this Search Report available is claimed.

Timing

Generally, it takes about six to nine months after filing date and completion of all formalities to receive a Search Report prepared by the EPO on behalf of the Luxembourgish Patent Office. As usual, such Search Report is accompanied by the searching examiner’s Written Opinion provided in the language of the proceedings.

To make use of the refund option, the Search Report must be available when filing a subsequent application, no later than 12 months from the underlying priority date.

Note that the Luxembourgish patent application does not necessarily need to be the priority application of the future patent family. It can of course be filed shortly after any (legally required under some national patent laws, e.g. in USA and France) national base application claiming the priority of such base application.

Considering the EPO’s time frame for preparation of the Search Report, it is necessary to file the Luxembourgish patent application as soon as possible, ideally in the first month after filing the national base application.

Formalities

There are only few formalities to be fulfilled to bring a patent application validly on file in Luxembourg. Necessary fees need to be paid and translations are to be filed, if needed.

For filing, neither a Power of Attorney nor an assignment or any notarized documents are required. As Luxembourg does not provide for a substantive examination, a patent certificate is automatically issued after about 18 months as of the filing date.

Language Regime

Most importantly, Luxembourg accepts any of the official languages of the European Patent Office (English, French and German) as drafting language of a Luxembourgish patent application, with the formal requirement that the claims shall be available in German or French.

In case the application is filed in English, for the purpose of obtaining an English language Search Report, the quality of the claim translations in German or French doesn’t matter as the Search Report is prepared in the drafting language of the application. Consequently, even a computer-based German or French translation could be filed to fulfil the formal requirement. The translated claims need to be filed at latest one month after the filing date. Obviously, it should be kept in mind that a right based on computer translated claims is not useful for litigation purposes.

Fees

Filing a Luxembourgish patent application costs 270€ in official fees. This includes an official filing fee of 20€ and an official Search fee of 250€ (as of April 2015).

If the applicant is interested only in obtaining an inexpensive EPO Search Report, Luxembourg is obviously an attractive option, keeping in mind that the European Search Fees are normally 1285€ and the International Search fees are normally 1875€ (as of April 2015).

Finally, no claim fees are applicable in Luxembourg. The EPO will search any amount of claims filed under the Luxembourg regime without additional fees.

Priority document

For subsequent filings claiming the priority of a Luxembourgish patent application a priority document is often needed. This is available free of charge and can be requested during the filing step simply by filing an additional copy of the application documents. The priority document is usually delivered in about two weeks.

Representative

For prosecuting a patent application in the Grand Duchy of Luxembourg, a local representative needs to be appointed for applicants having their domicile or headquarters outside Europe. Dennemeyer & Associates regularly files Luxembourgish patent applications, and we are happy to provide a tailor-made offer based on your specific needs.

The Search Report

The Search Report is directed to the first invention mentioned in the claims.

In case of lack of unity, divisional applications need to be filed. Payment of additional search fees to achieve EPO Search Report(s) for the additional invention(s) is not possible.

We strongly advise applicants to file separate Luxembourgish patent applications directed to the individual inventions from the outset, in case concerns related to lack of unity.

Refunds

Given the availability of the EPO Search Report through the Luxembourgish patent application, two routes for search fee refunds exist.

For a maximum refund, both routes require the claims of the subsequent application compared to the Luxembourgish priority application to be substantially unchanged or only incorporating subject matter of a previously filed dependent claim.

According to our experience, the refund will happen in about 14 to 16 months after the priority date.

European patent applications

Upon filing a local patent application with the EPO, the priority of the Luxembourgish application needs to be claimed. The necessary official fees, including the European Search fee, have to be paid first.

Due to the availability of the EPO’s Search Report in the priority application, the EPO automatically refunds up to 84% of the European Search fee, without needing a refund request.

PCT applications

Upon filing a PCT application with the competent receiving office, the priority of the Luxembourgish application needs to be claimed. In addition, the EPO needs to be selected as International Search Authority (ISA).

The necessary official fees, including the International Search fee, have to be paid first. Due to the availability of the EPO’s Search Report in the priority application the EPO automatically refunds up to 100% of the International Search fee. No refund request is required.

Incorporation of amendments

Unless taken from dependent claims, amendments should be incorporated only into the description of the subsequent application rather than into the claims, in order to safely benefit from the maximum refund of the Search fee.

rfichter@dennemeyer-law.com Read more

Companies often use the symbols “®” and “™” to show the status of their trademarks. However, they are, at times, used incorrectly and trademark owners may not be aware that misuse can have significant consequences. The “®” means that a mark has been registered with the governing body of the country, while the “™” means that the mark has not been registered but is in use by the company.

In some countries such as Mexico, Chile, Peru, Philippines, the marking is compulsory, in the sense that in the absence of any marking with the symbol “®”, a trademark registration cannot be opposed against third parties.

For the countries where the use of the symbols is not mandatory, companies should take into consideration that this could have dissuasive influence on third parties, as a warning that the owner of the trademark will defend against unauthorized use.

As the rules may vary from country to country, we aim to provide an overview of the characteristics of specific countries, as well as some details and advice about the proper use of these symbols and how to avoid potential problems.

The “®” sign

The “®” symbol is used by companies to inform consumers and future trademark applicants that their sign is a registered trademark. It is usually placed on the right-hand side of the trademark, superscripted, and in a smaller type size than the mark itself.

cstahl@dennemeyer-law.com Read more

The purpose of this white paper is to introduce the different types of trademark maintenance actions and their terms of protection in order to provide an overview of when, where and how they need to be filed.

Introduction

When talking about maintaining a trademark right, most people immediately think of a renewal. However, maintaining a trademark may also consist of other actions beside a renewal that need to be taken in order to keep a trademark alive. There are actually five types of maintenance:

  • Renewal
  • Cautionary Notice
  • Tax
  • Affidavit of Use
  • Proof Renewal of Basic Registration.

The renewal per se consists of filing an application with the respective Trademark Office in the form of a document that needs to show the relevant trademark and owner data. Such renewal applications have to be filed in all countries except in Eritrea, Comoro Islands, Maldives, Myanmar, Palau, Nauru and East Timor, where cautionary notices have to be filed. Cautionary Notices are advertisements in local newspapers by which the trademark owners state that they own the mark and that no third party may therefore use a similar or identical mark.

These notices are subsequently filed with the TM Office which, if a trademark law exists, issues a renewal certificate. If not, the outside counsel will provide a cutting of the advertisement only.

mheirend@dennemeyer.com Read more

On 25 March 2015, the Enlarged Board of the European Patent Office handed down its decision in the consolidated cases G 2/12 ("Tomato II") and G 2/13 ("Broccoli II"). The decision has been eagerly awaited, see Dennemeyer’s newsletter about decision T 1729/06 ("Watermelons").

As the interested circles are certainly already well aware of, the Enlarged Board held in G 2/12 and G 3/13 that the exclusion of essentially biological processes for the production of plants under the provisions of the European Patent Convention does not preclude the grant of a patent claim directed to a plant obtained in such a process; see Catchword 1. This is also true if (i) the patent claim is drafted as a product-by-process claim and (ii) the claimed plant can only be produced in an essentially biological process; see Catchword 2.

What is however additionally interesting to note is that the Enlarged Board indirectly encourages applicants to file patent applications for plants, which are obtained in essentially biological processes, with the European Patent Office. At VIII.2(6)(d) of the Reasons, the Enlarged Board discusses national patentability exclusions of plants which are generated by an essentially biological process. Some of these national patentability exclusions are narrower than the Enlarged Board’s ruling. Accordingly, applicants who intend to obtain a patent for such plants learn that the best way of doing so is by prosecuting their patent applications at the European Patent Office.

Another lesson learned is that the Enlarged Board seems to interpret the scope of protection of a product-by-process claim in a broad manner. The Enlarged Board actually states:

“As pointed out by the referring Boards, by virtue of Article 64(2) EPC:  (a)  the protection conferred by a process claim extends to the products directly obtained by such process,  (b)  the protection conferred by a product claim comprises using as well as producing the product and  (c)  the product claimed in terms of a product-by-process claim extends to products which are structurally identical to the claimed product but which are produced by a different method.” (at VIII.2(6)(b) of the Reasons; emphasis added)

It is seen from (c) that the Enlarged Board does not limit the scope of protection of a product-by-process only to products which are obtained by the process steps described in that claim. This seems to be different to at least some national civil courts in Europe which hear patent infringement cases.

While the statement of the Enlarged Board is at best an obiter dictum and not binding for any national court, it might become relevant once the Unified Patent Court is operating in Europe. Namely, according to Article 24(1)(c) of the Agreement on a Unified Patent Court, one source of law for procedures before that Court shall be the European Patent Convention. This source of law might well include the case law under the European Patent Convention, including the case law of the Boards of Appeal and especially of the Enlarged Board of Appeal of the European Patent Office. As such, Tomato II and Broccoli II might become relevant in the future when product-by-process claims are litigated before the Unified Patent Court.

ckoester@dennemeyer-law.com Read more

Italy is certainly well-known for its cultural heritage spanning more than two thousand years. Counting 49 UNESCO World Heritage Sites, it holds a greater number of such sites than any other country worldwide. It is therefore no wonder that today’s 21st century Italy contains multiple traits attributed to the “Bel Paese” (The Beautiful Country), in particular those related to its pleasing cuisine and modern but timeless design.

The latter, a wonderful expression of the eternal Italian creative spirit and its natural sense for beauty, has long been a subject for different types of legal protection. Dating back to 1868, the Italian legal and doctrinarian system has since undergone many, often fast and radical changes. Some of these changes are due to the fact that Italy is member of the EU.

We refer, in particular, to the respective EU Directives in rem which came into force over the last 15 years. The first and foremost point to observe here is the 180° epic conversion from the narrow old to the wider new system: before, the law basically allowed only for an alternative protection, where artistic works fell exclusively under the copyright law, industrial designs under the ornamental model law, and distinctive shapes under the trademark law.

Now, the law allows for a full cumulative protection under all the aforesaid intellectual property rights (provided, of course, that each of their single requirements is met in every specific case).

Although a digression into the vivid legislative past would definitely be worth a longer sojourn, the current observations will rather focus on the actual aspects of gaining exclusive rights on designs (understood as visible outward forms or patterns) in Italy and the European Union.

jwrede@dennemeyer-law.com Read more

As a general rule, an applicant is free to draft a patent claim in any desired claim language; the same is true for the accompanying description. However, when an invention manifests in particular parameters and the invention shall be protected by a European patent granted under the European Patent Convention, some particular issues may arise. Five of these issues are discussed in this paper. Contrary to Hamlet, we must ask not only one question in this context, but several.

Clarity: Is it usual, or is it not usual: that is the question.

Although a product may be defined in a claim in various ways, the Guidelines for Examination in the European Patent Office (hereinafter: “the Guidelines”) state that a product should only be exceptionally defined by its parameters. In this context, parameters are considered to be characteristic values, which may be values of directly measurable properties or may be defined as more or less complicated mathematical combinations of several variables in the form of formulae.

However, according to the Guidelines, such a characterization by parameters is in principle only allowable in those cases where the invention cannot be adequately defined in any other way. Additionally, it is required that the parameters can be clearly and reliably determined either by indications in the description or by objective procedures, which are usual in the art. Given that the definition of the invention should appear completely in the claim itself whenever reasonably practicable, and given that the method of measurement is necessary for the unambiguous definition of the parameter, the method should be mentioned in the claim.

There are only three exceptions to the general rule that the method of and means for measurement of the parameter must be included in the claim, namely:

(i) The description of the method is so long that its inclusion would make the claim unclear through lack of conciseness or difficult to understand (in which case the claim should include a reference to the description);

(ii) A person skilled in the art would know which method to employ, e.g. because there is only one method, or because a particular method is commonly used; or

(iii) All known methods yield the same result (within the limits of measurement accuracy).

In all other cases the method of and means for measurement should be included in the claims, as the claims define the matter for which protection is sought.

Further, while parameters can meet the requirement of clarity, the foregoing is only true for parameters which are considered “usual” by the skilled addressee. In contrast, cases in which unusual parameters are employed or a non-accessible apparatus for measuring the parameter(s) is used are prima facie objectionable on grounds of lack of clarity, as no meaningful comparison with the prior art can be made.

ckoester@dennemeyer-law.com Read more

Maintenance fees, sometimes referred to as renewal fees or annuity fees, for patent rights have to be paid annually in most countries. The differences from one country to the other are the starting point of the first payment and the amount of the maintenance fees. A few countries provide reductions on fees if you are an individual or your company has a small entity status. But what can you do if you are a large entity? Basically not much – besides reducing the number of your patents.

There is, however, one legal institute that is available to any entity irrespective of its size and nature that requires at first and foremost the willingness to grant a licence on your patent right.

The owner of a patent can apply to the Intellectual Property Office to have the patent endorsed for licence of right (L.O.R.). This application by the patentee is a declaration of willingness to grant a licence to anyone. The endorsement acts as an invitation to third parties to apply for a licence. The advantage of the licence of right is that it lets other people know that licences are available and that maintenance fees are reduced by 50%.

Unfortunately, not many countries provide for licence of right. The European Patent Convention does not provide for L.O.R. – grant of a licence is governed by Art. 73 EPC but this is not our subject here.

There are approximately 20 countries which have this option. Among them are some important patent filing jurisdictions:

  • Germany (Licence of right is called Lizenzbereitschaft and is governed by §23 Patentgesetz);
  • Italy (Licenza di diritto, Art. 80 Decreto Legislativo of 10th February 2005 no. 30);
  • Spain (Licencia de pleno derecho, Art. 81 Ley 11/86 de 20th March 1986);
  • United Kingdom (Licence of right, Art. 46 Patents Act 1977).
  • France is no longer among the countries. Art L 613-10 governing L.O.R. was abolished by Law no. 2005-842 of 26 July 2005.

Since provisions of L.O.R. have minor differences from country to country, the following paragraph deals exemplarily with the German Law. The declaration that licences under the patent are to be available as of right is effective upon receipt by the German Patent & Trademark Office (DPMA). It can be filed at any time after grant of the patent or while the patent application is pending. That means that the patentee must grant a licence to anyone who wants one. The endorsement is registered and published. As long as an exclusive licence is registered under the patent the declaration is not possible.

As mentioned there are differences, the United Kingdom for example requires that the patent is granted.

Renewal fees falling due after the L.O.R. is filed are reduced by 50%. The United Kingdom IPO recommends on their website to file a L.O.R. at least ten days before the annuity falls due.

Other countries – besides the above four - who grant a fee reduction for L.O.R. are Belarus, Brazil, Czech Republic, Ireland, Lithuania, Latvia, Russian Federation, Slovakia.

The German Patent & Trademark Office as well as the United Kingdom IPO provide on their website access to a database containing information on patents that are available for a licence.

As the patentee can apply for its entry, he/she can also apply for cancellation of a Licence of Right. A L.O.R. will be cancelled if there are no existing licences and the renewal fees have been balanced. The United Kingdom requires additionally that any opposition to the cancellation has been dealt with.

cklamp@dennemeyer-law.com Read more

This paper deals with preliminary injunctions (PIs) based on patents with a view towards European procedures. Also discussed are precautionary measures that a potential defendant in PI proceedings may take in order to avoid an injunction.

Background of preliminary injunctions

A patent proprietor who identifies an act infringing one or more of his patents, may have an interest that the infringement is stopped immediately. Such a patent proprietor will therefore seek immediate injunctive relief. The injunctive relief may be permanent, but permanent injunctive relief is typically only granted after lengthy court proceedings on the merits of a case. In contrast, courts may, upon application by the patent proprietor, order injunctive relief in the form of a provisional measure. In the European Union, provisional measures are mandatorily available in all member states.

Provisional measures are regularly granted in preliminary injunction procedures. There are two procedural possibilities, i.e. either the defendant is heard by the court before a decision on the application for a PI is taken (inter partes procedure), or, in case any delay would cause irreparable harm to the patent proprietor, the PI may even be granted without hearing the defendant (ex parte procedure).

Naturally, when a defendant is injuncted and has to stop the act in question immediately, this may constitute a significant threat to his business. From the defendant’s perspective, all reasonable steps against preliminary injunctions should be taken, and should be taken in due course. Some recommendations are given below.

ckoester@dennemeyer-law.com Read more

The purpose of this white paper is to introduce some points to keep in mind before and after filing an application in Japan. We will address the following matters: (1) before filing: patentable invention, types of claims, contents of specification and grace period (2) after filing: the scope of amendment and how to accelerate the examining procedure.

Filing a patent application

In order to be granted a Japanese patent, the claimed invention must be a statutory “invention" (Article 2(1) of the Patent Law) and must be "industrially applicable" (Article 29(1)).

Examples of non-statutory inventions are:

  • A law of nature as such (ex. a law of preservation of energy, etc.);
  • Mere discoveries and not creations (e.g. discoveries of natural things like an ore or natural phenomena, etc.);
  • Those contrary to a law of nature (e.g. the so-called perpetual motion, etc.); and
  • Those in which a law of nature is not utilized (e.g. a rule for playing a game as such, methods for doing business as such, etc.).

Examples of industrially inapplicable inventions are:

  • Methods of surgery, therapy or diagnosis of humans (including administering a drug to a human being);
  • An invention applied only for personal use, such as a method of smoking, etc.; and
  • Practically inapplicable inventions (Example: a method for preventing an increase in ultraviolet rays associated with the destruction of the ozone layer by covering the whole earth's surface with an ultraviolet ray-absorbing plastic film).
ksekiguchi@dennemeyer-law.com Read more

As we all know, we have heard of the common types of trademarks used today such as word or device trademarks. Further, we know the widely discussed 3D trademarks, e.g. Coca Cola’s bottle and we cannot forget sound trademarks that are used in TV advertisements for example. However, in the European Union most people have not heard of collective or certification trademarks, or are unsure of what to make of such trademarks.

Collective trademarks

Let’s start with a simple definition of a collective trademark: a collective trademark is owned by an association or a legal person of public law and it is used to distinguish goods and services of members from those of non-members. The proprietor of a Community collective trademark can therefore only be an association of manufacturers, producers, suppliers of services, or traders and legal persons governed by public law.

The special advantage of the collective trademark is the possibility of being an indication to designate the geographical origin of the goods and services. This is in contrast to the regular, individual trademark which prevents an indication to a geographical origin, since this would be held as being descriptive.

The white paper is available as a PDF.

Download it now

afalter@dennemeyer-law.com Read more

Whether justified or not – that remains to be seen – there are concerns that the enforcement of unitary patents will be far slower, more expensive and more unpredictable than has been the case with patents in Germany up to now. Some sceptics are already advising their clients to avoid European patents and revert to national filings. Whether or not this makes sense will be briefly clarified here.

Is it really advisable to file nationally again within Europe? After all, the objective of this approach is to keep the German or other national infringement courts for litigation. However, in the Agreement on a Unified Patent Court (UPC) there are a few relevant regulations concerning this question.

Once a European patent has been granted, the validity of the unitary patent can be requested for all states of the EU that have ratified the UPC up to that point, meaning those for which the UPC agreement and the EU regulation[1] are in effect. This request must be submitted to the EPO - together with a translation[2], at least for the time being - within one month following the mention of grant (Art. 9 Sec. 1 g), Regulation (EU)).

But that is only an option. You don’t have to do it. You can stay with the “classic” European patent and validate traditionally[3]. You will do this anyway if you only want protection for a few countries, since the unitary patent will only pay off if there are four or five countries or more, the exact number of countries depends on the office fees, which are still under discussion.

Now, the unified patent court system is also valid for “classic” European patents (Art. 32 tog. with Art. 2, letters e), f) and g), UPC Agreement). That is precisely what makes up the compulsory nature of the new court system.

However, it is possible to choose to opt out under Art. 83, Sect. 3, UPC. You can declare before the Registry of the court that you wish to stay with the old court system. And this can be done up to one month prior to the end of the transitional period pursuant to Art. 83, Sect. 1 or 5 UPC (Art. 83, Sect. 3 UPC).

And you can even declare this opt-out for European patent applications (Art. 83, Sect. 3, Sentence 1 UPC)!

This means you can still file an application(!) for a European patent several years from now, until shortly before the transitional period expires, and still keep the old court system for this patent application all the way to the end of the life of the patent.

mkoellner@dennemeyer-law.com Read more

This webinar looks at the current state of the trademark renewal industry and its implications. What can you do to protect your company's bottom line?

 Watch now!

This webinar looks at the current state of the trademark renewal industry and its implications. What can you do to protect your company's bottom line?

 Watch now!

lsteinberg@dennemeyer.com Read more

What does future of trademarks hold in 5, 10, even 15 years? Join Devon Sparrow from Citrix and Michael Graham from Expedia as they discuss key trends in the trademark arena.

Watch now!

What does future of trademarks hold in 5, 10, even 15 years? Join Devon Sparrow from Citrix and Michael Graham from Expedia as they discuss key trends in the trademark arena.

Watch now!

clevitt@dennemeyer.com Read more

The introduction of the European patent with unitary effect (also known as the unitary patent) enables patent holders to protect their inventions in 25 member states by filing a single patent application at the European Patent Office. The procedure up to granting of the unitary patent remains the same as for regular European patents without unitary effect.

After the patent is granted, there will be no need to validate it one by one in each country, making the whole procedure simpler and much less expensive. Inventors will no longer have to comply with complex validation requirements that vary by jurisdiction, and most importantly, the introduction of the unitary patent will substantially lower translation costs in the participating Member States.

Anybody, regardless of the country of origin, can opt for a unitary patent. Administration is centralized at the EPO throughout the patent’s lifetime, until the end of the patent term (20 years from the filing date of the patent application at the latest).

Legal framework

  • The 'unitary patent package' consists of three elements:
  • Council Regulation 1257/2012 - Unitary Patent – (December 17, 2012) creating a European patent with unitary effect (or unitary patent);
  • Council Regulation 1260/2012 - Translation of Unitary Patent – (December 17, 2012) establishing a language regime applicable to the Unitary patent;
  • Agreement on a Unified Patent Court – (January 11, 2013) - international agreement among Member States setting up a single patent jurisdiction: the Unified Patent Court (UPC).

Current situation regarding translation regime

Applications for European patents can be filed in any language. However, if the application was not filed in English, German or French, a translation into one of the official languages of the EPO needs to be provided. This becomes the language in which the proceedings are conducted and in which the patent is granted. Also, before grant, translations of the claims into two other official languages other than the language of the proceedings have to be filed. This language regime remains the same for the unitary patent.

During a transitional period ranging from 6 to 12 years (sooner if the European Council decides that high quality machine translations into all official languages of the Union are available on-line and free of charge, and terminates the transitional period) unitary patents that were granted in French or German will need to be translated into English and the ones granted in English will have to be translated to another official language of the European Union.

It is important to stress that in this phase a translation to another official language of the Union has no legal effect and is for information purposes only. Importance of choosing another official language of the Union comes only in the later stage in case of proceedings before the UPC.

In the event of a dispute relating to an alleged infringement of a unitary patent, the patent proprietor shall provide, at the request and the choice of an alleged infringer, a full translation of the unitary patent into an official language of either the participating Member State in which the alleged infringement took place or in which the alleged infringer is domiciled.

In the event of a dispute related to a unitary patent, the patent proprietor shall provide, at the request of a competent court in the participating Member States, a full translation of the patent into the language used in the proceedings.

thadzija@dennemeyer-law.com Read more

Warum ist ein aktives Währungsmanagement wichtig für Ihre Firma? Wie hoch ist das Potential für nachhaltige Erfolge?

Währungsschwankungen stellen international tätige Firmen und Kanzleien zunehmend vor Herausforderungen. Erfahren Sie in unserem Webinar, welche Bedeutung dieser Bereich für Ihre Firma hat und wie und wie Sie mit Hilfe einfacher Tricks schnelle Verbesserungen erzielen können.

1. August 2017, 16.30 – 17:00 Uhr, gratis

Was erwartet Sie?

  • Ein Gefühl für die Dimensionen der täglichen Marktpreisschwankungen und die Bedeutung für den IP Bereich bekommen.
  • Oft gemachte Fehler in Firmen erkennen und das eigene Risikopotential frühzeitig aufdecken und steuern.
  • Einen Überblick über vorhandene Absicherungsstrategien und deren Preis erhalten.
  • Einen Ausblick über die Bedeutung und Vorteile eines aktiven Währungsmanagements erhalten.
  • Best-Practices für Ihr eigenes Unternehmen

Senden

Ihr Experte

Alexander Klinke

Global Head of Treasury Management der Dennemeyer Group

Warum ist ein aktives Währungsmanagement wichtig für Ihre Firma? Wie hoch ist das Potential für nachhaltige Erfolge?

Währungsschwankungen stellen international tätige Firmen und Kanzleien zunehmend vor Herausforderungen. Erfahren Sie in unserem Webinar, welche Bedeutung dieser Bereich für Ihre Firma hat und wie und wie Sie mit Hilfe einfacher Tricks schnelle Verbesserungen erzielen können.

1. August 2017, 16.30 – 17:00 Uhr, gratis

Was erwartet Sie?

  • Ein Gefühl für die Dimensionen der täglichen Marktpreisschwankungen und die Bedeutung für den IP Bereich bekommen.
  • Oft gemachte Fehler in Firmen erkennen und das eigene Risikopotential frühzeitig aufdecken und steuern.
  • Einen Überblick über vorhandene Absicherungsstrategien und deren Preis erhalten.
  • Einen Ausblick über die Bedeutung und Vorteile eines aktiven Währungsmanagements erhalten.
  • Best-Practices für Ihr eigenes Unternehmen

Senden

Ihr Experte

Alexander Klinke

Global Head of Treasury Management der Dennemeyer Group

Read more

What is the current state of the patent annuity industry? How does this affect you?

This webinar looks at the current state of the patent annuity industry and its implications. What can you do to protect your company's bottom line?

What You Will Discover

You will leave the webinar with:

  • Examination of the current patent annuity industry.
  • Potential impact on patent portfolio management. 
  • Suggestions on steps you should take.
  • Future implications for the industry. 

 

Watch now!

Speaker

Leon Steinberg
Managing Director, Dennemeyer North America

Leon Steinberg is the Managing Director, North America for Dennemeyer Group. Prior to joining Dennemeyer Leon was the Chairman of the Black Hills Group and served as CEO of Black Hills renewals business and its technology businesses. Leon was previously the founder and CEO of Intellevate and the CEO of Foundation IP, both of which were sold to CPA Global. After the sale, Leon served as a member of CPA Global's senior management team.

Leon is a lawyer and a former partner at the Maslon law firm in Minneapolis. Leon founded and served as CEO of Meritas and was an owner and former President of Super Lawyers and Law   Politics magazine. He was an adjunct professor at the University of Michigan Institute on Law Firm Management. Leon is married, with four beautiful children, and one not so beautiful child. He enjoys running, skiing, tennis and is known to have an irreverent sense of humor.

What is the current state of the patent annuity industry? How does this affect you?

This webinar looks at the current state of the patent annuity industry and its implications. What can you do to protect your company's bottom line?

What You Will Discover

You will leave the webinar with:

  • Examination of the current patent annuity industry.
  • Potential impact on patent portfolio management. 
  • Suggestions on steps you should take.
  • Future implications for the industry. 

 

Watch now!

Speaker

Leon Steinberg
Managing Director, Dennemeyer North America

Leon Steinberg is the Managing Director, North America for Dennemeyer Group. Prior to joining Dennemeyer Leon was the Chairman of the Black Hills Group and served as CEO of Black Hills renewals business and its technology businesses. Leon was previously the founder and CEO of Intellevate and the CEO of Foundation IP, both of which were sold to CPA Global. After the sale, Leon served as a member of CPA Global's senior management team.

Leon is a lawyer and a former partner at the Maslon law firm in Minneapolis. Leon founded and served as CEO of Meritas and was an owner and former President of Super Lawyers and Law   Politics magazine. He was an adjunct professor at the University of Michigan Institute on Law Firm Management. Leon is married, with four beautiful children, and one not so beautiful child. He enjoys running, skiing, tennis and is known to have an irreverent sense of humor.

lsteinberg@dennemeyer.com Read more

What does future of patents hold in 5, 10, even 15 years? Join Jay and Leon as they discuss key trends in the patent arena. What are or should you be doing to prepare?

Even though Jay and Leon don't have a magical crystal ball, their years' of experience in patents provide a sound foundation to draw from for industry trend analysis - and yes, a little speculation. They will also draw from conversations held in 8 cities at the recently concluded Forum - The Future of IP and Technology Law Forum - where hundreds gathered to discuss these topics.

There will be time at the end of this hard-hitting, 30-min webinar for audience questions.

Watch now!

Speakers

Leon Steinberg
Managing Director, Dennemeyer North America

Leon Steinberg is the Managing Director, North America for Dennemeyer Group. Prior to joining Dennemeyer Leon was the Chairman of the Black Hills Group and served as CEO of Black Hills renewals business and its technology businesses. Leon was previously the founder and CEO of Intellevate and the CEO of Foundation IP, both of which were sold to CPA Global. After the sale, Leon served as a member of CPA Global's senior management team.

Leon is a lawyer and a former partner at the Maslon law firm in Minneapolis. Leon founded and served as CEO of Meritas and was an owner and former President of Super Lawyers and Law   Politics magazine. He was an adjunct professor at the University of Michigan Institute on Law Firm Management. Leon is married, with four beautiful children, and one not so beautiful child. He enjoys running, skiing, tennis and is known to have an irreverent sense of humor.

Jay Erstling
Patterson Thuente IP

Prior to joining Patterson Thuente IP, Jay served as Director of the Office of the Patent Cooperation Treaty (PCT) and Director-Advisor to the Director General of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland, where he was instrumental in reforming PCT policy and expanding and modernizing the PCT system.

Jay also serves as an advisor and expert witness on PCT, NAFTA and WTO matters, in particular on behalf of major pharmaceutical manufacturers, and as a consultant to foreign governments on WTO TRIPS compliance issues. Recently, Jay served as an expert witness in the UNCITRAL/ICSID arbitration Eli Lilly and Company v. The Government of Canada.

Find out more

What does future of patents hold in 5, 10, even 15 years? Join Jay and Leon as they discuss key trends in the patent arena. What are or should you be doing to prepare?

Even though Jay and Leon don't have a magical crystal ball, their years' of experience in patents provide a sound foundation to draw from for industry trend analysis - and yes, a little speculation. They will also draw from conversations held in 8 cities at the recently concluded Forum - The Future of IP and Technology Law Forum - where hundreds gathered to discuss these topics.

There will be time at the end of this hard-hitting, 30-min webinar for audience questions.

Watch now!

Speakers

Leon Steinberg
Managing Director, Dennemeyer North America

Leon Steinberg is the Managing Director, North America for Dennemeyer Group. Prior to joining Dennemeyer Leon was the Chairman of the Black Hills Group and served as CEO of Black Hills renewals business and its technology businesses. Leon was previously the founder and CEO of Intellevate and the CEO of Foundation IP, both of which were sold to CPA Global. After the sale, Leon served as a member of CPA Global's senior management team.

Leon is a lawyer and a former partner at the Maslon law firm in Minneapolis. Leon founded and served as CEO of Meritas and was an owner and former President of Super Lawyers and Law   Politics magazine. He was an adjunct professor at the University of Michigan Institute on Law Firm Management. Leon is married, with four beautiful children, and one not so beautiful child. He enjoys running, skiing, tennis and is known to have an irreverent sense of humor.

Jay Erstling
Patterson Thuente IP

Prior to joining Patterson Thuente IP, Jay served as Director of the Office of the Patent Cooperation Treaty (PCT) and Director-Advisor to the Director General of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland, where he was instrumental in reforming PCT policy and expanding and modernizing the PCT system.

Jay also serves as an advisor and expert witness on PCT, NAFTA and WTO matters, in particular on behalf of major pharmaceutical manufacturers, and as a consultant to foreign governments on WTO TRIPS compliance issues. Recently, Jay served as an expert witness in the UNCITRAL/ICSID arbitration Eli Lilly and Company v. The Government of Canada.

Find out more

apetriceanu@dennemeyer.com Read more

Dennemeyer & Associates Dubai and the University of Sharjah are looking forward to building a strong partnership for the improvement of Intellectual Property in United Arab Emirates.

During an informal meeting on May 9th, 2017, members of Dennemeyer & Associates Dubai met high representatives from the University of Sharjah, UAE, to discuss about innovation and IP. The UoS was founded in 1997 by the ruler of Sharjah, HH Sheikh Dr. Sultan bin Muhammad Al-Qasimi, and is by now the largest University in the UAE. We were impressed by the achievements made and the University’s profound focus on R&D in all technical fields.

Dennemeyer is looking forward to partner with the University and work together to the improvement of Intellectual Property in the area. As a first initiative, Dennemeyer will hold a seminar on IP at the UoS, including notions about their “innovation box”, which shall raise the IP awareness on the campus and give guidelines to future inventors among the students and teachers. We foresee more great projects to come in the near future and are grateful for the opportunity of working together with the prestigious University of Sharjah.

 Attached you can see a picture from the meeting between the Dennemeyer & Associates and UoS representatives.

 univ sharjah

From left to right: Mr. Khalid Elkhabir (Head of Patent Dept. DAAE), Dr. Chaouki Ghenai (Chair of Research Funding Department), Dr. Khaled Besbes (Coordinator of Research Support Services), Prof. Maamar Bettayeb (Vice Chancellor for Research & Graduate Studies), Jan Wrede (Director of DAAE), Prof. Taleb Al Tal (Director of Research Institute of Medical & Health Sciences), Prof. Abdalla El-Mneizel (Director of Research Institute for Humanities and Social Sciences); behind the camera: Ms. Noha Shaikh Al-Ard (Pat Dept. DAAE).

mcalin@dennemeyer.com Read more

Celebrating its continuous presence at INTA, Dennemeyer has had a special event prepared for its clients: an awesome adventure at sea!

sailing regatta 2

Before this year’s INTA, Dennemeyer invited its clients to a wonderful adventure at sea. The Dennemeyer pre-INTA sailing regatta, a sailing trip on the shores of Barcelona, was met by calm seas and fair winds. 15 sailing boats and one rib boat were waiting for Dennemeyer's clients.

sailing regatta 2

After the sailing regatta, Dennemeyer and its guests continued the fun Saturday evening at the Boo Beach Club where everybody had the opportunity to network over delicious barbeque and excellent drinks.

sailing regatta 3

Visit us at our INTA booth and discover Dennemeyer’s new look.

mcalin@dennemeyer.com Read more

Space, the final frontier! Well, not anymore, because thanks to a group of 6 9th grade students from Brasov, Romania, we will be able to survive in space. Not very soon, but give them some time and they will make it possible.

This year’s NASA Ames Space Settlement Contest for space colonization has seen a great deal of incredible projects. 6000 kids ranging from 7th to 12th grade have battled for a place on the prestigious NASA podium, but only a few made it.

Heosphoros, the Romanian team, has placed on the 1st place for kids in the 9th grade, winning with their space station located in the Lagrangian point L4. The 6 9 graders are all from Andrei Saguna National College, and are coordinated by their Physics teacher, Mrs. Carmen Tanasescu. The kids are: Alexandra Băitanu, Diana Maria Chichernea, Elena Isaia, Iulia Kis, Alexandru Matei Rădulescu and Mihai Alexandru Bîscă.

But it’s a long way from Romania to the United States, where the children are supposed to give a presentation to the world most prestigious minds, meet Nobel prize winners and accept their award. That is why Dennemeyer has decided to support their project and sponsor their trip and presentation to St Louis, Missouri.

Space, the final frontier! Well, not anymore, because thanks to a group of 6 9th grade students from Brasov, Romania, we will be able to survive in space. Not very soon, but give them some time and they will make it possible.

This year’s NASA Ames Space Settlement Contest for space colonization has seen a great deal of incredible projects. 6000 kids ranging from 7th to 12th grade have battled for a place on the prestigious NASA podium, but only a few made it.

Heosphoros, the Romanian team, has placed on the 1st place for kids in the 9th grade, winning with their space station located in the Lagrangian point L4. The 6 9 graders are all from Andrei Saguna National College, and are coordinated by their Physics teacher, Mrs. Carmen Tanasescu. The kids are: Alexandra Băitanu, Diana Maria Chichernea, Elena Isaia, Iulia Kis, Alexandru Matei Rădulescu and Mihai Alexandru Bîscă.

But it’s a long way from Romania to the United States, where the children are supposed to give a presentation to the world most prestigious minds, meet Nobel prize winners and accept their award. That is why Dennemeyer has decided to support their project and sponsor their trip and presentation to St Louis, Missouri.

xx Read more

After wrapping up the final of our IP Christmas Quiz championship yesterday, we are thrilled to congratulate the winner: Singapore-based patent attorney Ken Simpson from MasterCard Asia Pacific. He wins the iPad Mini with an impressive score of 12.770 points.

Dr. Reinhold Nowak, CEO of the Dennemeyer Group, states: “Congratulations to the winner, as well as to everyone who helped make the Christmas edition of our IP Quiz a great success for the second time.” Dr. Robert Fichter, Director of Dennemeyer & Associates, adds: “The questions of our quiz were really tough. Congratulations to our players for their impressive achievements – we are proud to announce that the quiz created a total donation amount of 13.398 euros to Doctors Without Borders.”

Beside the money donated through the Dennemeyer IP Christmas Quiz, we also contributed to charitable causes in Romania: Dennemeyer IP Solutions Romania donated 11.000 euros to “Hospice Casa Sperantei”, a foundation that offers palliative care for the elderly, as well as for patients affected by terminal or life-limiting illnesses and counseling and support services to their families. The Romanian subsidiary of IP law firm Dennemeyer & Associates donated 17.000 euros to Save the Children Romania as part of our commitment to support the education and acquisition of high tech equipment for children.

Altogether the Dennemeyer Group donated more than 40.000 euros to various charity projects. Thanks to all who helped us make it possible!

After wrapping up the final of our IP Christmas Quiz championship yesterday, we are thrilled to congratulate the winner: Singapore-based patent attorney Ken Simpson from MasterCard Asia Pacific. He wins the iPad Mini with an impressive score of 12.770 points.

Dr. Reinhold Nowak, CEO of the Dennemeyer Group, states: “Congratulations to the winner, as well as to everyone who helped make the Christmas edition of our IP Quiz a great success for the second time.” Dr. Robert Fichter, Director of Dennemeyer & Associates, adds: “The questions of our quiz were really tough. Congratulations to our players for their impressive achievements – we are proud to announce that the quiz created a total donation amount of 13.398 euros to Doctors Without Borders.”

Beside the money donated through the Dennemeyer IP Christmas Quiz, we also contributed to charitable causes in Romania: Dennemeyer IP Solutions Romania donated 11.000 euros to “Hospice Casa Sperantei”, a foundation that offers palliative care for the elderly, as well as for patients affected by terminal or life-limiting illnesses and counseling and support services to their families. The Romanian subsidiary of IP law firm Dennemeyer & Associates donated 17.000 euros to Save the Children Romania as part of our commitment to support the education and acquisition of high tech equipment for children.

Altogether the Dennemeyer Group donated more than 40.000 euros to various charity projects. Thanks to all who helped us make it possible!

Read more

Curious to gather insights about your IP function’s performance and compare its practices with that of peers? Try out Dennemeyer’s online IP Quick Check with the following advantages:

  • Free of charge
  • Takes less than 10 minutes
  • Get your benchmarking report
  • Results and participation fully confidential

Addressing a variety of activities ranging from strategic management to IP valuation, the IP Quick Check attributes your organization an individual score and compares it to the average score of other companies.

Find the IP Quick Check here.

Curious to gather insights about your IP function’s performance and compare its practices with that of peers? Try out Dennemeyer’s online IP Quick Check with the following advantages:

  • Free of charge
  • Takes less than 10 minutes
  • Get your benchmarking report
  • Results and participation fully confidential

Addressing a variety of activities ranging from strategic management to IP valuation, the IP Quick Check attributes your organization an individual score and compares it to the average score of other companies.

Find the IP Quick Check here.

Read more

Last year December was for giving. Thanks to you, our donation campaign for Doctors Without Borders became a real success with more than 15000 correct answers and more than 15000 Euro donated for a good cause. This year our ambition is to even surpass that result. “We need your help to reach that goal,” states Dr. Reinhold Nowak, CEO of the Dennemeyer Group. “The idea of our Dennemeyer IP Christmas Quiz is that the more you play and the more correct answers you give, the more you make us donate.”

Starting today we will give 1 Euro for each correct answer given in our IP Christmas Quiz.  All you have to do is log in, choose the Christmas Quiz mode and play the patent or trademark qualifiers - depending on your professional background. The two separate championships will end middle of December and the Top Five of both categories will automatically enter the final round. In the final ten competitors will play a mixed challenge to select the ultimate winner of Dennemeyer’s IP Christmas Quiz 2016. The winner of the final will receive an iPad as a personal reward, next to the certainty that no other player has contributed more to our donation campaign.

Have fun and share the care this December.

Last year December was for giving. Thanks to you, our donation campaign for Doctors Without Borders became a real success with more than 15000 correct answers and more than 15000 Euro donated for a good cause. This year our ambition is to even surpass that result. “We need your help to reach that goal,” states Dr. Reinhold Nowak, CEO of the Dennemeyer Group. “The idea of our Dennemeyer IP Christmas Quiz is that the more you play and the more correct answers you give, the more you make us donate.”

Starting today we will give 1 Euro for each correct answer given in our IP Christmas Quiz.  All you have to do is log in, choose the Christmas Quiz mode and play the patent or trademark qualifiers - depending on your professional background. The two separate championships will end middle of December and the Top Five of both categories will automatically enter the final round. In the final ten competitors will play a mixed challenge to select the ultimate winner of Dennemeyer’s IP Christmas Quiz 2016. The winner of the final will receive an iPad as a personal reward, next to the certainty that no other player has contributed more to our donation campaign.

Have fun and share the care this December.

Read more

Dennemeyer & Associates has created a specialist practice group to assist clients in sub-saharan Africa, called “Dennemeyer Africa”. Dr. Fichter, Director of Luxembourg-based patent law firm Dennemeyer & Associates S.A., states: “Due to the increasing demand from clients who require IP management or legal services in sub-saharan Africa and South Africa, it was necessary for us to offer a group of people who focus on that promising growth market.”

Christophe van Zyl, South African Attorney and Trademark Practitioner and of Counsel head of Dennemeyer’s Africa practice group, adds: “The practice group has been created firstly to assist international clients with all their IP business in sub-saharan Africa and South Africa with a more focused approach due to increasing demands from clients for more focused expertise in the region. Secondly because Dennemeyer has identified the continent as a region where clients are reconsidering their level of protection in IP to plan for anticipated economic growth.”

Dennemeyer Africa is capable of offering a whole bundle of IP related legal and management services as well as software solutions covering the entire continent. The range of services includes legal advice on branding in Africa and South Africa, patent and trademark searching, drafting, filing, prosecution, recordals, annuities and renewals, litigation, commercial IP, advice on pharmaceuticals labeling and packaging as well as IP portfolio management.

Van Zyl is based in Europe for the sake of providing easy face to face contact and is available to travel to our clients or meet them at any of our offices in Luxembourg, Frankfurt or Munich. The practice group is backed up by Dennemeyer’s existing global expertise and will include Trademark and Design Attorney (BX / EM) Vanja Nedimovic, Patent Attorney (DE / AT), foreign filing expert Thomas Lederer, Product and Quality Manager Martin Chatel and Dubai-based attorney-at-law Jan Wrede (DE / IT).

For further information about the new practice group please contact Christophe van Zyl.

Dennemeyer & Associates has created a specialist practice group to assist clients in sub-saharan Africa, called “Dennemeyer Africa”. Dr. Fichter, Director of Luxembourg-based patent law firm Dennemeyer & Associates S.A., states: “Due to the increasing demand from clients who require IP management or legal services in sub-saharan Africa and South Africa, it was necessary for us to offer a group of people who focus on that promising growth market.”

Christophe van Zyl, South African Attorney and Trademark Practitioner and of Counsel head of Dennemeyer’s Africa practice group, adds: “The practice group has been created firstly to assist international clients with all their IP business in sub-saharan Africa and South Africa with a more focused approach due to increasing demands from clients for more focused expertise in the region. Secondly because Dennemeyer has identified the continent as a region where clients are reconsidering their level of protection in IP to plan for anticipated economic growth.”

Dennemeyer Africa is capable of offering a whole bundle of IP related legal and management services as well as software solutions covering the entire continent. The range of services includes legal advice on branding in Africa and South Africa, patent and trademark searching, drafting, filing, prosecution, recordals, annuities and renewals, litigation, commercial IP, advice on pharmaceuticals labeling and packaging as well as IP portfolio management.

Van Zyl is based in Europe for the sake of providing easy face to face contact and is available to travel to our clients or meet them at any of our offices in Luxembourg, Frankfurt or Munich. The practice group is backed up by Dennemeyer’s existing global expertise and will include Trademark and Design Attorney (BX / EM) Vanja Nedimovic, Patent Attorney (DE / AT), foreign filing expert Thomas Lederer, Product and Quality Manager Martin Chatel and Dubai-based attorney-at-law Jan Wrede (DE / IT).

For further information about the new practice group please contact Christophe van Zyl.

Read more

Yesterday, we held our Annual Meeting event at Cercle National des Armées in Paris, France. Together with speakers from Renault, L’Oreal and Boehringer Ingelheim we dove into the latest trends in the IP industry:

  • From custom to standard: Replacing an IP management solution with DIAMS iQ;
  • IP Performance Check: Reaching the next level of IP excellence;
  • Infringing Domain Names: React and protect your trademarks;
  • Make your life easier by interim support to bridge staffing bottlenecks;
  • Which global trends can affect your IP Portfolio;
  • IP in danger.

In addition to the presentations, we exchanged views during round-table discussions. Our thanks go out to all our guests for making this event an inspiration.

You can get two of the presentations here.

Check out the gallery for more snapshots from the event.

Yesterday, we held our Annual Meeting event at Cercle National des Armées in Paris, France. Together with speakers from Renault, L’Oreal and Boehringer Ingelheim we dove into the latest trends in the IP industry:

  • From custom to standard: Replacing an IP management solution with DIAMS iQ;
  • IP Performance Check: Reaching the next level of IP excellence;
  • Infringing Domain Names: React and protect your trademarks;
  • Make your life easier by interim support to bridge staffing bottlenecks;
  • Which global trends can affect your IP Portfolio;
  • IP in danger.

In addition to the presentations, we exchanged views during round-table discussions. Our thanks go out to all our guests for making this event an inspiration.

You can get two of the presentations here.

Check out the gallery for more snapshots from the event.

Read more

On Monday November 7th, we held the reception of our Annual Meeting in Paris, France at the Museum of Counterfeiting. Guests were offered a presentation about the exposed counterfeit goods and they had fun discovering a great diversity of reproductions. The tour was followed by an informal standing reception with hors d'oeuvres and drinks and proved to be a great start for this year's Annual Meeting.

Check out the gallery to discover more about our evening.

On Monday November 7th, we held the reception of our Annual Meeting in Paris, France at the Museum of Counterfeiting. Guests were offered a presentation about the exposed counterfeit goods and they had fun discovering a great diversity of reproductions. The tour was followed by an informal standing reception with hors d'oeuvres and drinks and proved to be a great start for this year's Annual Meeting.

Check out the gallery to discover more about our evening.

Read more

The first Dennemeyer evening lecture with the provocative title “Protectionism? And for whom? SEPs and FRAND enforcement in China” was held on October 6th in the group’s Munich office. It focused on the key enforcement activities of competition law in China, with a focus on Standard Essential Patents (SEPs). The lecture was held by Ms. Yuan Li, a student at Munich Intellectual Property Law Center (MIPLC), who gained work experience in the patent area at Siemens, the Chinese Ministry of Industry and Information Technology and Goldwind Co., Ltd. She holds an M.Sc. in IP Management from the Huazhong University of Science & Technology in 2013. In her presentation she outlined that businesses active in industries in which intellectual property rights play an important role - especially where SEPs are involved - should expect close scrutiny from Chinese agencies as they continue to develop in this complex area.


The lecture also focused on:

  • Compulsory license
  • Using injunctive relief
  • Determining FRAND royalty rates
  • License bundling

The lecture was followed by an excited discussion among the roughly 30 attendees – as well as by cool drinks. Further complementary evening lectures will follow and be announced at www.dennemeyer.com

For further question, please contact: seminars@dennemeyer.com

 

The first Dennemeyer evening lecture with the provocative title “Protectionism? And for whom? SEPs and FRAND enforcement in China” was held on October 6th in the group’s Munich office. It focused on the key enforcement activities of competition law in China, with a focus on Standard Essential Patents (SEPs). The lecture was held by Ms. Yuan Li, a student at Munich Intellectual Property Law Center (MIPLC), who gained work experience in the patent area at Siemens, the Chinese Ministry of Industry and Information Technology and Goldwind Co., Ltd. She holds an M.Sc. in IP Management from the Huazhong University of Science & Technology in 2013. In her presentation she outlined that businesses active in industries in which intellectual property rights play an important role - especially where SEPs are involved - should expect close scrutiny from Chinese agencies as they continue to develop in this complex area.


The lecture also focused on:

  • Compulsory license
  • Using injunctive relief
  • Determining FRAND royalty rates
  • License bundling

The lecture was followed by an excited discussion among the roughly 30 attendees – as well as by cool drinks. Further complementary evening lectures will follow and be announced at www.dennemeyer.com

For further question, please contact: seminars@dennemeyer.com

 

Read more

The field mouse inhabits a wide range of habitats including grasslands and marshes, pastures and gardens, and urban areas. As a consequence of a decision of the Bundespatentgericht (Federal Patent Court of Germany) from September 2016 with the keyword "field mouse bait station" it has also found its way to the Bundesgerichtshof (German Federal Supreme Court).

From the start: Bundespatentgericht recently confirmed the rejection of a utility model application to protect a method of catching mice with a bait station due to the fact that methods are not protectable as utility models under German Law . The German branch of Luxembourg based patent law firm Dennemeyer & Associates S.A. had brought the appeal asking if § 2 Nr. 3 GebrMG (the statutory provision that forbids the protection of methods as a utility model) is compatible with constitutional and basic Human Rights Protection both at national and European level.

Utility models consist of an exclusive right granted for an invention that is similar to a patent right, but its main purpose is to achieve a faster registration than that of a patent by replacing examination and grant by simple registration. In return, its lifespan is shortened. Not all countries offer this type of protection and their scope differs widely.

Patent Attorney Dr. Malte Köllner, head of Dennemeyer & Associates’ office in Frankfurt am Main, had claimed that “utility models started as a protection for tools and machines, they later included protection even for substances and pharmaceuticals and their use as treatments in diseases. From a historical point of view, the protection of utility models developed as a right parallel to the protection of patents.” He further mentioned that “methods are still not included within the protection of utility models mainly due to the lack of drawings in such applications”.

So Köllner raises the question if “the inclusion of mandatory drawings couldn’t be sufficient to allow the registration of methods as utility models in Germany?” The main issue surrounding this subject are the different requirements for device utility models and method utility models and the question whether this differentiation might clash with fundamental rights.

The question is now pending before the Bundesgerichtshof (German Federal Supreme Court). Köllner states: “I want to encourage everybody to register methods as utility models in combination with an request for suspension until this issue is finally decided by the Bundesgerichtshof or the Federal Constitutional Court.”

Dr. Fichter, Director of Dennemeyer & Associates S.A., adds: “Even if the case may at first glance seem funny given the fact that a small animal like the filed mouse is involved, it has the potential to change German IP history - if the Bundesgerichtshof should decide that methods must be treated and protected like other Intellectual Property Rights such as patents.”

In that case the field mouse would have found a new habitat: the history books of German IP law.

For further information please contact: mkoellner@dennemeyer-law.com

The field mouse inhabits a wide range of habitats including grasslands and marshes, pastures and gardens, and urban areas. As a consequence of a decision of the Bundespatentgericht (Federal Patent Court of Germany) from September 2016 with the keyword "field mouse bait station" it has also found its way to the Bundesgerichtshof (German Federal Supreme Court).

From the start: Bundespatentgericht recently confirmed the rejection of a utility model application to protect a method of catching mice with a bait station due to the fact that methods are not protectable as utility models under German Law . The German branch of Luxembourg based patent law firm Dennemeyer & Associates S.A. had brought the appeal asking if § 2 Nr. 3 GebrMG (the statutory provision that forbids the protection of methods as a utility model) is compatible with constitutional and basic Human Rights Protection both at national and European level.

Utility models consist of an exclusive right granted for an invention that is similar to a patent right, but its main purpose is to achieve a faster registration than that of a patent by replacing examination and grant by simple registration. In return, its lifespan is shortened. Not all countries offer this type of protection and their scope differs widely.

Patent Attorney Dr. Malte Köllner, head of Dennemeyer & Associates’ office in Frankfurt am Main, had claimed that “utility models started as a protection for tools and machines, they later included protection even for substances and pharmaceuticals and their use as treatments in diseases. From a historical point of view, the protection of utility models developed as a right parallel to the protection of patents.” He further mentioned that “methods are still not included within the protection of utility models mainly due to the lack of drawings in such applications”.

So Köllner raises the question if “the inclusion of mandatory drawings couldn’t be sufficient to allow the registration of methods as utility models in Germany?” The main issue surrounding this subject are the different requirements for device utility models and method utility models and the question whether this differentiation might clash with fundamental rights.

The question is now pending before the Bundesgerichtshof (German Federal Supreme Court). Köllner states: “I want to encourage everybody to register methods as utility models in combination with an request for suspension until this issue is finally decided by the Bundesgerichtshof or the Federal Constitutional Court.”

Dr. Fichter, Director of Dennemeyer & Associates S.A., adds: “Even if the case may at first glance seem funny given the fact that a small animal like the filed mouse is involved, it has the potential to change German IP history - if the Bundesgerichtshof should decide that methods must be treated and protected like other Intellectual Property Rights such as patents.”

In that case the field mouse would have found a new habitat: the history books of German IP law.

For further information please contact: mkoellner@dennemeyer-law.com

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To better satisfy the needs of its clients and expand its workforce, Dennemeyer France is happy to announce its move to a bigger office.

Our new address is:

Dennemeyer & Cie (France) SARL
23 Rue Clapeyron
75008 Paris
The general phone number is: +33 1 53 01 94 50.

The telephone numbers and email addresses of our employees will remain unchanged.

We are also happy to inform you that we have created two generic email addresses to allow you to contact us more easily:

Helpdesk France: for DIAMS classic or DIAMS iQ support software
helpdesk-fr@dennemeyer.com
Telephone: +33 1 53 01 94 59

Info France: for all queries regarding our IP software products and services
info-fr@dennemeyer.com
Telephone: +33 1 53 01 94 50

For any new business inquiries do not hesitate to contact us.

To better satisfy the needs of its clients and expand its workforce, Dennemeyer France is happy to announce its move to a bigger office.

Our new address is:

Dennemeyer & Cie (France) SARL
23 Rue Clapeyron
75008 Paris
The general phone number is: +33 1 53 01 94 50.

The telephone numbers and email addresses of our employees will remain unchanged.

We are also happy to inform you that we have created two generic email addresses to allow you to contact us more easily:

Helpdesk France: for DIAMS classic or DIAMS iQ support software
helpdesk-fr@dennemeyer.com
Telephone: +33 1 53 01 94 59

Info France: for all queries regarding our IP software products and services
info-fr@dennemeyer.com
Telephone: +33 1 53 01 94 50

For any new business inquiries do not hesitate to contact us.

Read more

Businesses active in industries where intellectual property rights play an important role - especially where Standard Essential Patents (SEPs) are involved - should expect close scrutiny from Chinese agencies as they continue to develop their approach in this complex area.

In this perspective, Dennemeyer & Associates is hosting a lecture where our speaker, Ms. Yuan Li will summarize the key enforcement activities of competition law in China, particularly focus on SEPs and how they relate various issues.

If this issue is of interest for you, join us at our Munich office. The lecture is followed by a drinks reception.

Reserve your seat

When: Thursday, October 6, 2016, 5:30 PM

Where: Dennemeyer & Associates – Landaubogen 1 - 3, Munich, Germany

About the lecturer: Ms. Yuan Li is currently a student at MIPLC, who gained work experience in the patent area at Siemens, the Chinese Ministry of Industry and Information Technology and Goldwind Co., Ltd. She holds an M.Sc. in IP Management from the Huazhong University of Science & Technology in 2013.

Businesses active in industries where intellectual property rights play an important role - especially where Standard Essential Patents (SEPs) are involved - should expect close scrutiny from Chinese agencies as they continue to develop their approach in this complex area.

In this perspective, Dennemeyer & Associates is hosting a lecture where our speaker, Ms. Yuan Li will summarize the key enforcement activities of competition law in China, particularly focus on SEPs and how they relate various issues.

If this issue is of interest for you, join us at our Munich office. The lecture is followed by a drinks reception.

Reserve your seat

When: Thursday, October 6, 2016, 5:30 PM

Where: Dennemeyer & Associates – Landaubogen 1 - 3, Munich, Germany

About the lecturer: Ms. Yuan Li is currently a student at MIPLC, who gained work experience in the patent area at Siemens, the Chinese Ministry of Industry and Information Technology and Goldwind Co., Ltd. She holds an M.Sc. in IP Management from the Huazhong University of Science & Technology in 2013.

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The Japan Patent Office recently revised the rules relating to restoration of IP rights. Kazuya Sekiguchi discusses the implications.

Traditionally, it has been difficult to restore IP rights in Japan. There have been almost no cases where restoration was admitted after a failure to meet a deadline. To align with international harmonisation, the Japan Patent Office (JPO) recently revised the rules relating to restoration of IP rights and the requirements have been changed to be more applicant/proprietor friendly. However, it is still not clear whether it has actually become easier to reinstate lost IP rights or not.

Below, we examine the new requirements for reinstating IP rights in Japan and review the Guidelines for Restoration published by the JPO.

According to the revised rules relating to restoration of IP rights, failure to meet the deadlines of the following procedures can be saved:

  • Filing a translation for foreign language application (Article 36-2 of Patent Law)
  • Request for an examination (Article 48-3 of Patent Law).
  • Paying patent annuities (with surcharges) (Article 112-2 of Patent Law, Article 33-2 of Utility Model Law and Article 44-2 of Design Law).
  • Filing a translation for PCT nationalization (Article 184-4 of Patent Law)
  • .Requesting a renewal for a trademark (Article 21 of Trademark Law).
  • Claiming priority based on the Paris Convention (Article 43-2 of Patent Law).

The requirements for the restoration are as follows:

  • There must be a justifiable reason for failing to comply with the time limit, in spite of the applicant taking the necessary measures required; and,
  • Regarding the first five procedures listed above, the request for restoring the IP rights must be filed within two months of the date on which the justifiable reason ceased to exist, as long as this is done within one year (six months for the fifth point, requesting the renewal of a trademark) after the expiration of the period.
  • With respect to the sixth procedure (claiming priority based on the Paris Convention), the request must be filed within two months of the expiration of the priority period (ie, within 14 months of the priority date).

As mentioned above, there needs to be a justifiable reason for not complying with the time limit in order for the lapsed IP rights to be restored. According to the JPO, ‘justifiable reason’ can be considered similar to the due care criteria adopted in the European Patent Office (EPO). In the Guidelines for Restoration published by the JPO, examples in which restoration is admitted or not admitted are exemplified.

Whether the reason for missing a deadline is a justifiable reason depends on whether the reason was predictable. If the reason is predictable it cannot be justifiable. That is, a lapsed IP right cannot be restored when the reason for missing the deadline was predictable. In this regard, the Guidelines mention that “absence of the representative due to scheduled hospitalisation”, “demolition of old company building and construction of new one”, “the absence of successor due to retirement of the predecessor”, and “impossibility of handling cases due to scheduled electricity outage” are deemed to be predictable and thus the restoration based on those grounds will not be admitted.

Taking the absence of the representative due to scheduled hospitalisation, it seems that, according to the Guidelines, the JPO will regard it as scheduled hospitalization if the person could inform his absence to someone in advance. That is to say, it is regarded as unpredictable only when the person (representative) is suddendly admitted to hospital and had no chance to inform his absence to any other person. On the other hand, there was a case by the board of appeal of the EPO in which the EPO admitted reestablishment of rights when the appellant’s legal representative suffered a sudden illness and underwent surgery within two working days. Also, his secretary was absent on one of those two working days (T525/91). In this case, the representative had two days to inform his absence to the applicant, but the EPO admitted restoration under this condition.

On the contrary, the JPO will not admit restoration of the IP rights in the same situation as T525/91 because the representative could let others know of his absence before his hospitalisation.

If the reason for missing the deadline is unpredictable, the lapsed IP right may be restored, provided that the applicant/ proprietor/representative took all necessary measures to avoid any mistakes. The guidelines illustrate in which cases the restoration will or will not be admitted as follows:

Cases where the restoration will not be admitted

  • Wrong deadline was docketed due to incorrectly inputted data, wherein no substantial measure (eg, double check) was taken to avoid such a mistake.
  • Instruction did not reach the receiver due to communication error in email or facsimile, wherein the sender did not confirm the receipt by the receiver.
  • The person who failed to meet the deadline was not familiar with the deadline management system.

Cases where the restoration may be admitted

  • There was a specific situation making it impossible to avoid docketing the wrong deadline due to incorrectly inputted data, although substantial measures to avoid such mistake had been taken.
  • There was a specific situation making it impossible to avoid docketing the wrong deadline because there was an unpredictable system error.
  • The deadline was missed because of natural disaster.

As mentioned above, restoration cannot be admitted if wrong data was inputted and no substantial measure was taken. This means that if the deadline was missed because of human error, such as incorrect data inputting, without substantial measures such as double checking, it would be impossible to restore the IP right. This criterion is similar to that of the EPO, wherein the re-establishment of rights cannot be admitted if no cross-check (substantial measure to avoid mistakes) was taken (J 9/86, T 1465/07, T 257/07 and T 1962/08, for example).

In the European practice, however, the reestablishment of rights can be admitted when a mistake is an isolated mistake in a normally satisfactory system (for example, T1024/02, T165/04 and T221/04), and when it is plausibly shown that a normally effective system for monitoring time limits was established at the relevant time (J2/86 and J3/86).

On the other hand, in Japan it seems that an isolated mistake in a normally satisfactory system will not be a ground for restoration because it is required that there was a specific situation making it impossible to avoid the mistake, according to the Guidelines.

With regard to the specific situation making it impossible to avoid the mistake, the Guidelines exemplify a situation such as “the applicant/proprietor or the representative is a small entity like a family-run firm, and the person who handled IP matters died suddenly. In the confusion of such a situation, the newly appointed person to handle IP matters sent the documents to wrong address and the deadline was missed”. The example of the specific situation listed in the guidelines is so special that the hurdle for the request of restoration to be admitted seems to be still high in Japan.

Finally, the Guidelines state that the applicant/proprietor/representative also needs to take all necessary measures once he recognises the incident that prevents him from complying with a deadline. For example, a responsible person suddenly becomes ill in bed and cannot work for a while (red period inFigure 1) and his colleague could know this fact (and thus the colleague could know the risk of missing a deadline). In this case, the restoration cannot be admitted unless the colleague tried to avoid missing the deadline accordingly even if the other requirements (necessary measures were taken in advance and the request for the restoration was filed in an appropriate period) are met.

Discussion

The JPO states that the restoration may be admitted if there is a justifiable reason for not complying with the time limit and said justifiable reason can be considered similar to the due care criteria adopted in the EPO. However, according to the examples listed in the guidelines, it seems to be stricter in Japanese practice than in the European practice for the restoration to be admitted. Therefore, it is necessary to take care of deadlines in a specifically careful manner. The applicant/ proprietor should, for example, double check all deadlines with a second person as well as checking input data every few months.When the agent takes care of the deadlines, the applicant/proprietor should instruct him or her to adopt a careful check system and control the agent so that the check system works properly. Further, once the deadline is missed, the applicant/proprietor should take action for restoring his IP rights as soon as possible.

Mr. Kazuya SEKIGUCHI is Japanese and European patent attorney (弁理士(日本), 欧州特許弁理士, 学位: 工学修士(応用化学専攻) at Dennemeyer & Associates in Munich. He is active in the area of intellectual property law since 2004 and he is qualified as a M. Eng. (Applied Chemistry), and as a specific Infringement Lawsuits Counsel in Japan. His areas of expertise are chemistry, pharmaceutics, lasers (spectroscopics).You can contact Mr. Sekiguchi at: ksekiguchi@dennemeyer-law.com.

The Japan Patent Office recently revised the rules relating to restoration of IP rights. Kazuya Sekiguchi discusses the implications.

Traditionally, it has been difficult to restore IP rights in Japan. There have been almost no cases where restoration was admitted after a failure to meet a deadline. To align with international harmonisation, the Japan Patent Office (JPO) recently revised the rules relating to restoration of IP rights and the requirements have been changed to be more applicant/proprietor friendly. However, it is still not clear whether it has actually become easier to reinstate lost IP rights or not.

Below, we examine the new requirements for reinstating IP rights in Japan and review the Guidelines for Restoration published by the JPO.

According to the revised rules relating to restoration of IP rights, failure to meet the deadlines of the following procedures can be saved:

  • Filing a translation for foreign language application (Article 36-2 of Patent Law)
  • Request for an examination (Article 48-3 of Patent Law).
  • Paying patent annuities (with surcharges) (Article 112-2 of Patent Law, Article 33-2 of Utility Model Law and Article 44-2 of Design Law).
  • Filing a translation for PCT nationalization (Article 184-4 of Patent Law)
  • .Requesting a renewal for a trademark (Article 21 of Trademark Law).
  • Claiming priority based on the Paris Convention (Article 43-2 of Patent Law).

The requirements for the restoration are as follows:

  • There must be a justifiable reason for failing to comply with the time limit, in spite of the applicant taking the necessary measures required; and,
  • Regarding the first five procedures listed above, the request for restoring the IP rights must be filed within two months of the date on which the justifiable reason ceased to exist, as long as this is done within one year (six months for the fifth point, requesting the renewal of a trademark) after the expiration of the period.
  • With respect to the sixth procedure (claiming priority based on the Paris Convention), the request must be filed within two months of the expiration of the priority period (ie, within 14 months of the priority date).

As mentioned above, there needs to be a justifiable reason for not complying with the time limit in order for the lapsed IP rights to be restored. According to the JPO, ‘justifiable reason’ can be considered similar to the due care criteria adopted in the European Patent Office (EPO). In the Guidelines for Restoration published by the JPO, examples in which restoration is admitted or not admitted are exemplified.

Whether the reason for missing a deadline is a justifiable reason depends on whether the reason was predictable. If the reason is predictable it cannot be justifiable. That is, a lapsed IP right cannot be restored when the reason for missing the deadline was predictable. In this regard, the Guidelines mention that “absence of the representative due to scheduled hospitalisation”, “demolition of old company building and construction of new one”, “the absence of successor due to retirement of the predecessor”, and “impossibility of handling cases due to scheduled electricity outage” are deemed to be predictable and thus the restoration based on those grounds will not be admitted.

Taking the absence of the representative due to scheduled hospitalisation, it seems that, according to the Guidelines, the JPO will regard it as scheduled hospitalization if the person could inform his absence to someone in advance. That is to say, it is regarded as unpredictable only when the person (representative) is suddendly admitted to hospital and had no chance to inform his absence to any other person. On the other hand, there was a case by the board of appeal of the EPO in which the EPO admitted reestablishment of rights when the appellant’s legal representative suffered a sudden illness and underwent surgery within two working days. Also, his secretary was absent on one of those two working days (T525/91). In this case, the representative had two days to inform his absence to the applicant, but the EPO admitted restoration under this condition.

On the contrary, the JPO will not admit restoration of the IP rights in the same situation as T525/91 because the representative could let others know of his absence before his hospitalisation.

If the reason for missing the deadline is unpredictable, the lapsed IP right may be restored, provided that the applicant/ proprietor/representative took all necessary measures to avoid any mistakes. The guidelines illustrate in which cases the restoration will or will not be admitted as follows:

Cases where the restoration will not be admitted

  • Wrong deadline was docketed due to incorrectly inputted data, wherein no substantial measure (eg, double check) was taken to avoid such a mistake.
  • Instruction did not reach the receiver due to communication error in email or facsimile, wherein the sender did not confirm the receipt by the receiver.
  • The person who failed to meet the deadline was not familiar with the deadline management system.

Cases where the restoration may be admitted

  • There was a specific situation making it impossible to avoid docketing the wrong deadline due to incorrectly inputted data, although substantial measures to avoid such mistake had been taken.
  • There was a specific situation making it impossible to avoid docketing the wrong deadline because there was an unpredictable system error.
  • The deadline was missed because of natural disaster.

As mentioned above, restoration cannot be admitted if wrong data was inputted and no substantial measure was taken. This means that if the deadline was missed because of human error, such as incorrect data inputting, without substantial measures such as double checking, it would be impossible to restore the IP right. This criterion is similar to that of the EPO, wherein the re-establishment of rights cannot be admitted if no cross-check (substantial measure to avoid mistakes) was taken (J 9/86, T 1465/07, T 257/07 and T 1962/08, for example).

In the European practice, however, the reestablishment of rights can be admitted when a mistake is an isolated mistake in a normally satisfactory system (for example, T1024/02, T165/04 and T221/04), and when it is plausibly shown that a normally effective system for monitoring time limits was established at the relevant time (J2/86 and J3/86).

On the other hand, in Japan it seems that an isolated mistake in a normally satisfactory system will not be a ground for restoration because it is required that there was a specific situation making it impossible to avoid the mistake, according to the Guidelines.

With regard to the specific situation making it impossible to avoid the mistake, the Guidelines exemplify a situation such as “the applicant/proprietor or the representative is a small entity like a family-run firm, and the person who handled IP matters died suddenly. In the confusion of such a situation, the newly appointed person to handle IP matters sent the documents to wrong address and the deadline was missed”. The example of the specific situation listed in the guidelines is so special that the hurdle for the request of restoration to be admitted seems to be still high in Japan.

Finally, the Guidelines state that the applicant/proprietor/representative also needs to take all necessary measures once he recognises the incident that prevents him from complying with a deadline. For example, a responsible person suddenly becomes ill in bed and cannot work for a while (red period inFigure 1) and his colleague could know this fact (and thus the colleague could know the risk of missing a deadline). In this case, the restoration cannot be admitted unless the colleague tried to avoid missing the deadline accordingly even if the other requirements (necessary measures were taken in advance and the request for the restoration was filed in an appropriate period) are met.

Discussion

The JPO states that the restoration may be admitted if there is a justifiable reason for not complying with the time limit and said justifiable reason can be considered similar to the due care criteria adopted in the EPO. However, according to the examples listed in the guidelines, it seems to be stricter in Japanese practice than in the European practice for the restoration to be admitted. Therefore, it is necessary to take care of deadlines in a specifically careful manner. The applicant/ proprietor should, for example, double check all deadlines with a second person as well as checking input data every few months.When the agent takes care of the deadlines, the applicant/proprietor should instruct him or her to adopt a careful check system and control the agent so that the check system works properly. Further, once the deadline is missed, the applicant/proprietor should take action for restoring his IP rights as soon as possible.

Mr. Kazuya SEKIGUCHI is Japanese and European patent attorney (弁理士(日本), 欧州特許弁理士, 学位: 工学修士(応用化学専攻) at Dennemeyer & Associates in Munich. He is active in the area of intellectual property law since 2004 and he is qualified as a M. Eng. (Applied Chemistry), and as a specific Infringement Lawsuits Counsel in Japan. His areas of expertise are chemistry, pharmaceutics, lasers (spectroscopics).You can contact Mr. Sekiguchi at: ksekiguchi@dennemeyer-law.com.

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You are growing rapidly – and so are we. In light of our global expansion, our Munich offices have become too small for our needs. As of Tuesday, July 19, we will be serving our clients from a new location. Our new address is:

Landaubogen 1-3,

81373 Munich, Germany

We kindly request you update our contact details accordingly. Our telephone and fax numbers stay unchanged.

Are you interested in a personal appointment? Let us know.

You are growing rapidly – and so are we. In light of our global expansion, our Munich offices have become too small for our needs. As of Tuesday, July 19, we will be serving our clients from a new location. Our new address is:

Landaubogen 1-3,

81373 Munich, Germany

We kindly request you update our contact details accordingly. Our telephone and fax numbers stay unchanged.

Are you interested in a personal appointment? Let us know.

Read more

Dr. Malte Köllner from Dennemeyer & Associates has for the consecutive year, been selected as among Germany’s best lawyers 2016.

The ranking conducted by the biggest German business newspaper, Handelsblatt, in cooperation with “Best Lawyers”, the oldest and most highly-respected peer review guide for the legal profession worldwide, is based on a peer-to-peer survey among thousands of German colleagues.

Köllner, German Patent Attorney, as well as European Patent, Trademark and Design Attorney, has been ranked in the category “Gewerblicher Rechtsschutz / Industrial Property” as being one of Germany's Best Lawyers 2016.

Köllner states: “I am proud to be selected once again in the area of Intellectual Property, especially as this is a recognition that comes from my colleagues.”

Dr. Robert Fichter, Director of the patent law firm Dennemeyer & Associates, adds: “The ranking shows the increasing visibility of Dennemeyer & Associates in the German market. Our patent law firm is on the right track, which is also reflected by our strong growth and our ongoing global expansion.”

Köllner holds a Ph.D. in Physical Chemistry and a diploma in Physics from the University of Heidelberg. His areas of expertise include physics, physical chemistry, optics, lasers, biotechnology, medical devices and software. With a vast experience in the field of intellectual property, Köllner furthermore acts as the editor-in-chief of the well-known German journal for patent law “Mitteilungen der Deutschen Patentanwälte” (www.wolterskluwer.de) and is lecturer at various conferences and universities, such as Strasbourg and Maastricht.

Köllner has authored and co-authored numerous publications on the economic and legal side of the IP system, including a handbook on the Patent Cooperation Treaty.

His notable achievements in the IP area have, for several years in succession, listed him as one of the World’s Leading Lawyers and IP Strategists.

A few years ago, Köllner correctly predicted the failure of the German patent funds, at a time when there was still much hype around these funds (IAM).

At present, Köllner is building up Dennemeyer’s new monetization service and he heads the IP Due Diligence service at our Dennemeyer & Associates office from Frankfurt.  Köllner has extensive experience in performing hundreds of due diligence investigations for smaller clients, investors and Fortune 500 companies, in particular for venture capital investments.

Based on his practical experience and on the work done in the German standards committee on patent valuation (he has been voted as one of the “very few true experts”), Köllner developed the Dennemeyer approach to IP due diligence that is at the same time complete in its scope and economically efficient (see Malte Köllner: "Due Diligence or Discount, Monetary effect of legal aspects in patent valuation", Les Nouvelles, Volume XLIV No. 1, pages 24-37, March 2009).

Utilizing the resources of the local Dennemeyer & Associates offices across the world, the IP Due Diligence team can quickly perform insightful investigations and provide clients with a solid basis for decision making.

With the IP Due Diligence service, Dennemeyer & Associates reinforces its scope of providing the full range of legal services relating to intellectual assets.

“What sets Dennemeyer apart from our competitors and peers is that Dennemeyer is the only “full-service provider”. Due to the synergies of the patent law firm Dennemeyer & Associates & the Dennemeyer IP Solutions who offers complete IP management services and software, we are in a unique position to always make the most suitable offer to our clients globally.” (Dr. Malte Köllner)

Köllner can be contacted at: mKöllner@dennemeyer-law.com


Dr. Malte Köllner from Dennemeyer & Associates has for the consecutive year, been selected as among Germany’s best lawyers 2016.

The ranking conducted by the biggest German business newspaper, Handelsblatt, in cooperation with “Best Lawyers”, the oldest and most highly-respected peer review guide for the legal profession worldwide, is based on a peer-to-peer survey among thousands of German colleagues.

Köllner, German Patent Attorney, as well as European Patent, Trademark and Design Attorney, has been ranked in the category “Gewerblicher Rechtsschutz / Industrial Property” as being one of Germany's Best Lawyers 2016.

Köllner states: “I am proud to be selected once again in the area of Intellectual Property, especially as this is a recognition that comes from my colleagues.”

Dr. Robert Fichter, Director of the patent law firm Dennemeyer & Associates, adds: “The ranking shows the increasing visibility of Dennemeyer & Associates in the German market. Our patent law firm is on the right track, which is also reflected by our strong growth and our ongoing global expansion.”

Köllner holds a Ph.D. in Physical Chemistry and a diploma in Physics from the University of Heidelberg. His areas of expertise include physics, physical chemistry, optics, lasers, biotechnology, medical devices and software. With a vast experience in the field of intellectual property, Köllner furthermore acts as the editor-in-chief of the well-known German journal for patent law “Mitteilungen der Deutschen Patentanwälte” (www.wolterskluwer.de) and is lecturer at various conferences and universities, such as Strasbourg and Maastricht.

Köllner has authored and co-authored numerous publications on the economic and legal side of the IP system, including a handbook on the Patent Cooperation Treaty.

His notable achievements in the IP area have, for several years in succession, listed him as one of the World’s Leading Lawyers and IP Strategists.

A few years ago, Köllner correctly predicted the failure of the German patent funds, at a time when there was still much hype around these funds (IAM).

At present, Köllner is building up Dennemeyer’s new monetization service and he heads the IP Due Diligence service at our Dennemeyer & Associates office from Frankfurt.  Köllner has extensive experience in performing hundreds of due diligence investigations for smaller clients, investors and Fortune 500 companies, in particular for venture capital investments.

Based on his practical experience and on the work done in the German standards committee on patent valuation (he has been voted as one of the “very few true experts”), Köllner developed the Dennemeyer approach to IP due diligence that is at the same time complete in its scope and economically efficient (see Malte Köllner: "Due Diligence or Discount, Monetary effect of legal aspects in patent valuation", Les Nouvelles, Volume XLIV No. 1, pages 24-37, March 2009).

Utilizing the resources of the local Dennemeyer & Associates offices across the world, the IP Due Diligence team can quickly perform insightful investigations and provide clients with a solid basis for decision making.

With the IP Due Diligence service, Dennemeyer & Associates reinforces its scope of providing the full range of legal services relating to intellectual assets.

“What sets Dennemeyer apart from our competitors and peers is that Dennemeyer is the only “full-service provider”. Due to the synergies of the patent law firm Dennemeyer & Associates & the Dennemeyer IP Solutions who offers complete IP management services and software, we are in a unique position to always make the most suitable offer to our clients globally.” (Dr. Malte Köllner)

Köllner can be contacted at: mKöllner@dennemeyer-law.com


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Dennemeyer was invited last Friday July 8th to hold a presentation and individual consultation with the students from the LLM in Intellectual Property Law class of 2015/16 at the Intellectual Property Law Center (MIPLC www.miplc.de) in Munich. Hacer Hacisalihoglu from the Human Resources Department of our Munich office spent a morning together with the students giving advice on dos and don’ts in the application process. It was a good opportunity to get to know the next generation of IP experts that will join the market in the upcoming months.

Dennemeyer was invited last Friday July 8th to hold a presentation and individual consultation with the students from the LLM in Intellectual Property Law class of 2015/16 at the Intellectual Property Law Center (MIPLC www.miplc.de) in Munich. Hacer Hacisalihoglu from the Human Resources Department of our Munich office spent a morning together with the students giving advice on dos and don’ts in the application process. It was a good opportunity to get to know the next generation of IP experts that will join the market in the upcoming months.

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Mitchell Weinstein from Levenfeld Pearlstein, LLC, winner of the online Dennemeyer IP Quiz Spring Championship received his iPad on July 1st in Chicago. The championship ended last month and he succeeded in defeating his anonymous opponent in the Final Battle on Monday, June 27th. Congratulations!

The next championship will start soon, we will keep you informed.

Mitchell Weinstein from Levenfeld Pearlstein, LLC, winner of the online Dennemeyer IP Quiz Spring Championship received his iPad on July 1st in Chicago. The championship ended last month and he succeeded in defeating his anonymous opponent in the Final Battle on Monday, June 27th. Congratulations!

The next championship will start soon, we will keep you informed.

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Enjoy summer with us! After short presentations on current IP trends (held in German language) our complimentary workshops offer you a good opportunity to discuss the following topics:

After the presentations there will be plenty of time for discussions, networking and cool drinks – with a fantastic view.

Enjoy summer with us! After short presentations on current IP trends (held in German language) our complimentary workshops offer you a good opportunity to discuss the following topics:

After the presentations there will be plenty of time for discussions, networking and cool drinks – with a fantastic view.

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Exclusively for summer 2016, Dennemeyer continues its high demand webinar series. These webinars provide the tools and information for you to save key resources – your time and money. Join the webinar(s) to question the experts directly and find out what fellow intellectual property professionals are asking.

Learn more about the five webinars in July and August and register today.

Exclusively for summer 2016, Dennemeyer continues its high demand webinar series. These webinars provide the tools and information for you to save key resources – your time and money. Join the webinar(s) to question the experts directly and find out what fellow intellectual property professionals are asking.

Learn more about the five webinars in July and August and register today.

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The first online Dennemeyer IP Quiz championship outside an INTA annual meeting is now over. Many players have used their superpowers to test their knowledge about patents and trademarks and were having fun playing the online version of the popular Dennemeyer IP Quiz Championships. In the end, the two leading players competed against each other to win the prize. Congratulations to the winner of the Final Battle, Mitchell Weinstein from Levenfeld Pearlstein, LLC in Chicago, who clearly defeated his anonymous opponent (nickname “MarketingGuy”) in the final of the championship on Monday, June 27th. He will receive his iPad in Chicago soon.

Thanks to all the other players from all over the IP world! Stay tuned for our next challenge – this was just the beginning.

The first online Dennemeyer IP Quiz championship outside an INTA annual meeting is now over. Many players have used their superpowers to test their knowledge about patents and trademarks and were having fun playing the online version of the popular Dennemeyer IP Quiz Championships. In the end, the two leading players competed against each other to win the prize. Congratulations to the winner of the Final Battle, Mitchell Weinstein from Levenfeld Pearlstein, LLC in Chicago, who clearly defeated his anonymous opponent (nickname “MarketingGuy”) in the final of the championship on Monday, June 27th. He will receive his iPad in Chicago soon.

Thanks to all the other players from all over the IP world! Stay tuned for our next challenge – this was just the beginning.

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At INTA 2016 it was almost impossible not see the Dennemeyer booth - the biggest and highest booth of all and placed in the very center of the exhibition area. So it was no surprise that the local business media not only took notice of it but also decided to make their only interview at INTA 2016 with Dennemeyer’s CEO, Dr. Reinhold Nowak, and Managing Director North America, Leon Steinberg. Watch the clip with the interview and shots of the impressive booth here.

At INTA 2016 it was almost impossible not see the Dennemeyer booth - the biggest and highest booth of all and placed in the very center of the exhibition area. So it was no surprise that the local business media not only took notice of it but also decided to make their only interview at INTA 2016 with Dennemeyer’s CEO, Dr. Reinhold Nowak, and Managing Director North America, Leon Steinberg. Watch the clip with the interview and shots of the impressive booth here.

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Are you a law firm that has been using the same process for years? Curious on how you can save time, resources, and ultimately cost? Dennemeyer’s webinar on May 18th demonstrated how law firms, and ultimately the corporation, will benefit from a streamlined process.

In this webinar, Leon Steinberg discusses an outsourced model to record transfers and the associated cost savings. Why outsource this process? You can greatly reduce internal costs; and if you are a law firm, greatly increase profits. Webinar highlights include:

  • How to outsource post-M&A IP rights transfer projects.
  • 5 key aspects of an efficient recordal project.
  • How much money can you save?
  • What are key strategies to minimize time and maximize effectiveness?

Watch the recorded webinar today.

Are you a law firm that has been using the same process for years? Curious on how you can save time, resources, and ultimately cost? Dennemeyer’s webinar on May 18th demonstrated how law firms, and ultimately the corporation, will benefit from a streamlined process.

In this webinar, Leon Steinberg discusses an outsourced model to record transfers and the associated cost savings. Why outsource this process? You can greatly reduce internal costs; and if you are a law firm, greatly increase profits. Webinar highlights include:

  • How to outsource post-M&A IP rights transfer projects.
  • 5 key aspects of an efficient recordal project.
  • How much money can you save?
  • What are key strategies to minimize time and maximize effectiveness?

Watch the recorded webinar today.

Read more

Luxembourg-based leading intellectual property management service provider Dennemeyer Group reaffirms its commitment to the European market by relocating their Bracknell office to Reading, United Kingdom.

“The United Kingdom is not only one of the leading innovation champions in the world, but also an important market for IP filings and registrations, and a significant share of our customers and multinational companies are UK-based,” states Dennemeyer’s Head of Business Development Europe, Frank Melchiors. “Thus, the relocation of our office to Reading was a strategic and at the same time practical decision.”

Reading continues to score high on a number of key economic indicators such as economic contribution per worker and number of businesses per capita: it has one of the largest IT workforces and some of the highest densities of digital tech businesses in the UK. The region’s focus on Enterprise software, cloud computing, as well as Data management and analytics emphasize its exceptional position in the United Kingdom.

As of Thursday, June 9, 2016, our Reading office's address is:
Abbey House, 1650 Arlington Business Park
Theale, Reading, RG7 4SA, United Kingdom
Phone:  +44 (0) 1189298081 /
+44 (0) 1189298082

By optimizing our presence in the UK, we will serve as a direct point of contact for UK companies, corporations and law firms, addressing their IP needs and providing specialized advice. Furthermore, by using the synergies between the Dennemeyer Group and our patent law firm Dennemeyer & Associates, we are able to provide British clients with the full range of legal and non-legal IP services.

This is a continuation of the global expansion strategy of Dennemeyer Group and a strong commitment to the UK, which was initiated over 40 years ago. Dennemeyer set up their first overseas office in Stockport, UK in 1973 and established a team which handled the first computer-based patent annuity payments in the world.

+44(0)1189298082

Luxembourg-based leading intellectual property management service provider Dennemeyer Group reaffirms its commitment to the European market by relocating their Bracknell office to Reading, United Kingdom.

“The United Kingdom is not only one of the leading innovation champions in the world, but also an important market for IP filings and registrations, and a significant share of our customers and multinational companies are UK-based,” states Dennemeyer’s Head of Business Development Europe, Frank Melchiors. “Thus, the relocation of our office to Reading was a strategic and at the same time practical decision.”

Reading continues to score high on a number of key economic indicators such as economic contribution per worker and number of businesses per capita: it has one of the largest IT workforces and some of the highest densities of digital tech businesses in the UK. The region’s focus on Enterprise software, cloud computing, as well as Data management and analytics emphasize its exceptional position in the United Kingdom.

As of Thursday, June 9, 2016, our Reading office's address is:
Abbey House, 1650 Arlington Business Park
Theale, Reading, RG7 4SA, United Kingdom
Phone:  +44 (0) 1189298081 /
+44 (0) 1189298082

By optimizing our presence in the UK, we will serve as a direct point of contact for UK companies, corporations and law firms, addressing their IP needs and providing specialized advice. Furthermore, by using the synergies between the Dennemeyer Group and our patent law firm Dennemeyer & Associates, we are able to provide British clients with the full range of legal and non-legal IP services.

This is a continuation of the global expansion strategy of Dennemeyer Group and a strong commitment to the UK, which was initiated over 40 years ago. Dennemeyer set up their first overseas office in Stockport, UK in 1973 and established a team which handled the first computer-based patent annuity payments in the world.

+44(0)1189298082

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The European Patent Office (EPO) has very recently published a Notice concerning the opposition procedure before the EPO as from 1 July 2016. Readers will probably know that an opposition against a European Patent can be filed within nine months after grant. This will not change. Readers will probably also know that the opposition procedure can be quite lengthy so that years might pass before a decision is rendered by the first instance. This will change.

There are two major factors which shall contribute to speeding up the opposition procedure. Firstly, contrary to the former practice, extensions of time limits will be granted only in exceptional cases with duly substantiated requests. Secondly, when communicating the reply to an opposition from the patent proprietor to the opponent, the Opposition Division will at the same time prepare the next action. This next action will normally be the issuance of summons to oral proceedings.

The EPO claims that “[W]ith the revised workflow, the total time needed for a decision in straightforward cases will be reduced to 15 months, calculated as from expiry of the opposition period.” This will hopefully become reality and should make the possibility of a central revocation of a European Patent in an opposition procedure before the EPO even more attractive.

For further information and help, please feel free to contact ckoester@dennemeyer-law.com.

The European Patent Office (EPO) has very recently published a Notice concerning the opposition procedure before the EPO as from 1 July 2016. Readers will probably know that an opposition against a European Patent can be filed within nine months after grant. This will not change. Readers will probably also know that the opposition procedure can be quite lengthy so that years might pass before a decision is rendered by the first instance. This will change.

There are two major factors which shall contribute to speeding up the opposition procedure. Firstly, contrary to the former practice, extensions of time limits will be granted only in exceptional cases with duly substantiated requests. Secondly, when communicating the reply to an opposition from the patent proprietor to the opponent, the Opposition Division will at the same time prepare the next action. This next action will normally be the issuance of summons to oral proceedings.

The EPO claims that “[W]ith the revised workflow, the total time needed for a decision in straightforward cases will be reduced to 15 months, calculated as from expiry of the opposition period.” This will hopefully become reality and should make the possibility of a central revocation of a European Patent in an opposition procedure before the EPO even more attractive.

For further information and help, please feel free to contact ckoester@dennemeyer-law.com.

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On June 23rd, UK citizens will decide if they want to remain in the European Union. Besides the economic effects of an exit of a UK Brexit on the EU, IP owners should start thinking about both the implications this could have on those of their European IP rights that cover the UK, as well as possible future scenarios for their IP rights in general.

EU Legislation

First of all, it is important to note that this would be the first time in the history of the EU that a Member State leaves the EU, thus it is still not clear how this would actually work on a practical level. Article 50 of the TEU states that, “any Member State may withdraw from the Union in accordance with its own constitutional requirements. The Member State should notify the EU Council and both parties will conclude an agreement setting the arrangements and further relation between the country and the Union. After the Member State gives notice of its withdrawal, there is a two-year term for the treaties of the Union to cease their effects, unless the parties reach an agreement before the two-year term. However, this term might be extended by both parties.” As a result, EU treaties do not give much guidance on the exit of a Member State, making any possible scenario highly speculative.

Copyright protection

Regarding copyright protection, a Brexit would not have any major consequences, since copyright protection is not fully harmonized in the EU as it is. Further, copyright protection is mainly territorial and the UK is member to several International Treaties that cover copyright, thus they it would keep applying their national laws based on international minimum standards of protection.

Patent protection

First, it is worth highlighting that the protection of national Patents as well as national Trademark registrations would of course remain unchanged. Further, Patent applications filed with the EPO would also remain unchanged, since the EPC is not restricted to EU Member States. However, obtaining UK approval for the agreement on a Unified Patent Court might prove to be a challenge, since a Brexit would very likely slow down the implementation of the UPC.

Further, supplementary protection certificates for medicinal products are regulated by EU regulation N. 469/2009 and in Section 128B and Schedule 4A of the UK Patent Act 1977 (as amended), thus in case the UK decides to leave the EU, it is likely that either the Patent Act would have to be amended or a new Act would be required for obtaining SPCs in the UK. Moreover, as would be the case with any other EU right in force at the time of the exit, transitional provisions would have to be put in place in order to maintain the validity of already granted SPC’s in the UK.

Trademark and Design protection at the EUIPO

In the event of a Brexit, UK applicants would no longer be able to obtain protection in the UK by way of filing European trademarks and designs with EUIPO. An applicant could of course still file an EU application but would additionally have to file a separate national UK application. Moreover, according to Article 93.1 of the EU Trademark Regulations, only a legal practitioner in one of the Member States can act as representative in trademark matters before the EUIPO. As a result, UK attorneys would no longer be able to represent Trademarks and Designs before the EUIPO. Furthermore, a Brexit would necessitate transitional provisions for current EU Trademark and Designs registrations for converting these rights into national UK rights, if the owner wishes to maintain protection of such rights in the UK. Further, it would have to be decided if their rights once converted into national UK rights will keep their EU filing date.

Thus there are many uncertainties regarding the likely implications on IP if the UK decides to leave the EU. For now, IP owners should simply be aware that if a Brexit happens -they might face consequences with regard to the protection of their UK IP rights and that they may further have to take additional measures if they want to maintain their IP rights. Until a decision has been made, we can of course not give comprehensive advice on how to proceed, but can only point out the potentially controversial issues. We will of course look into these issues in more detail once the corresponding decisions have been made.

Read the Spanish version of the article published in The Patent Lawyer Mazagine.

Download the PDF article here.

Further information

On June 23rd, UK citizens will decide if they want to remain in the European Union. Besides the economic effects of an exit of a UK Brexit on the EU, IP owners should start thinking about both the implications this could have on those of their European IP rights that cover the UK, as well as possible future scenarios for their IP rights in general.

EU Legislation

First of all, it is important to note that this would be the first time in the history of the EU that a Member State leaves the EU, thus it is still not clear how this would actually work on a practical level. Article 50 of the TEU states that, “any Member State may withdraw from the Union in accordance with its own constitutional requirements. The Member State should notify the EU Council and both parties will conclude an agreement setting the arrangements and further relation between the country and the Union. After the Member State gives notice of its withdrawal, there is a two-year term for the treaties of the Union to cease their effects, unless the parties reach an agreement before the two-year term. However, this term might be extended by both parties.” As a result, EU treaties do not give much guidance on the exit of a Member State, making any possible scenario highly speculative.

Copyright protection

Regarding copyright protection, a Brexit would not have any major consequences, since copyright protection is not fully harmonized in the EU as it is. Further, copyright protection is mainly territorial and the UK is member to several International Treaties that cover copyright, thus they it would keep applying their national laws based on international minimum standards of protection.

Patent protection

First, it is worth highlighting that the protection of national Patents as well as national Trademark registrations would of course remain unchanged. Further, Patent applications filed with the EPO would also remain unchanged, since the EPC is not restricted to EU Member States. However, obtaining UK approval for the agreement on a Unified Patent Court might prove to be a challenge, since a Brexit would very likely slow down the implementation of the UPC.

Further, supplementary protection certificates for medicinal products are regulated by EU regulation N. 469/2009 and in Section 128B and Schedule 4A of the UK Patent Act 1977 (as amended), thus in case the UK decides to leave the EU, it is likely that either the Patent Act would have to be amended or a new Act would be required for obtaining SPCs in the UK. Moreover, as would be the case with any other EU right in force at the time of the exit, transitional provisions would have to be put in place in order to maintain the validity of already granted SPC’s in the UK.

Trademark and Design protection at the EUIPO

In the event of a Brexit, UK applicants would no longer be able to obtain protection in the UK by way of filing European trademarks and designs with EUIPO. An applicant could of course still file an EU application but would additionally have to file a separate national UK application. Moreover, according to Article 93.1 of the EU Trademark Regulations, only a legal practitioner in one of the Member States can act as representative in trademark matters before the EUIPO. As a result, UK attorneys would no longer be able to represent Trademarks and Designs before the EUIPO. Furthermore, a Brexit would necessitate transitional provisions for current EU Trademark and Designs registrations for converting these rights into national UK rights, if the owner wishes to maintain protection of such rights in the UK. Further, it would have to be decided if their rights once converted into national UK rights will keep their EU filing date.

Thus there are many uncertainties regarding the likely implications on IP if the UK decides to leave the EU. For now, IP owners should simply be aware that if a Brexit happens -they might face consequences with regard to the protection of their UK IP rights and that they may further have to take additional measures if they want to maintain their IP rights. Until a decision has been made, we can of course not give comprehensive advice on how to proceed, but can only point out the potentially controversial issues. We will of course look into these issues in more detail once the corresponding decisions have been made.

Read the Spanish version of the article published in The Patent Lawyer Mazagine.

Download the PDF article here.

Further information

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On May 24th we held our annual INTA dinner, this time at the Four Seasons Resort in Orlando Florida. Our guests enjoyed an exclusive dinner at the rooftop of the CAPA restaurant at the Walt Disney World Resort. There, our guests had the opportunity to taste the best tapas in town and at 10 pm they were enchanted by  the Disney World fireworks. This was a great opportunity for our team and clients to get together and enjoy food, drinks and a beautiful show.

Check out the gallery for more snapshots from the event.

On May 24th we held our annual INTA dinner, this time at the Four Seasons Resort in Orlando Florida. Our guests enjoyed an exclusive dinner at the rooftop of the CAPA restaurant at the Walt Disney World Resort. There, our guests had the opportunity to taste the best tapas in town and at 10 pm they were enchanted by  the Disney World fireworks. This was a great opportunity for our team and clients to get together and enjoy food, drinks and a beautiful show.

Check out the gallery for more snapshots from the event.

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On Saturday May 21st, we held our pre-INTA event at Gatorland, Orlando, Florida. We kicked off the 2016 INTA meeting with a fun and adventurous evening observing the alligators, bobcats, raccoons and other wild animals. Guests had the opportunity to enjoy the natural attractions while experiencing the excitement of being on an airboat. This was the perfect way to relax and have fun before starting INTA.

Check out the gallery for more snapshots from the event. For more details regarding the INTA receptions, head over to World IP Review.

On Saturday May 21st, we held our pre-INTA event at Gatorland, Orlando, Florida. We kicked off the 2016 INTA meeting with a fun and adventurous evening observing the alligators, bobcats, raccoons and other wild animals. Guests had the opportunity to enjoy the natural attractions while experiencing the excitement of being on an airboat. This was the perfect way to relax and have fun before starting INTA.

Check out the gallery for more snapshots from the event. For more details regarding the INTA receptions, head over to World IP Review.

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PATINFO, the 38th Colloquium of the Ilmenau University of Technology on Patent Information and Intellectual Property Rights, will take place from June 8 to 10 in Ilmenau, Germany. This year’s topic will be “BIG DATA - Opportunities and challenges”. Dennemeyer will have a booth at the event. Besides, Dennemeyer IP consultant Phillipp Hammans will give a presentation on “Digitalization: Impacts on your IP Strategy”, on the morning of June 9th.

The complete program of PATINFO can be found here: http://www.paton.tu-ilmenau.de/en/das-paton/patinfo/agenda.html

Contact Philipp Hammans at: phammans@dennemeyer.com

PATINFO, the 38th Colloquium of the Ilmenau University of Technology on Patent Information and Intellectual Property Rights, will take place from June 8 to 10 in Ilmenau, Germany. This year’s topic will be “BIG DATA - Opportunities and challenges”. Dennemeyer will have a booth at the event. Besides, Dennemeyer IP consultant Phillipp Hammans will give a presentation on “Digitalization: Impacts on your IP Strategy”, on the morning of June 9th.

The complete program of PATINFO can be found here: http://www.paton.tu-ilmenau.de/en/das-paton/patinfo/agenda.html

Contact Philipp Hammans at: phammans@dennemeyer.com

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The Dennemeyer Group organizes a complementary workshop for everyone interested in the future Unitary Patent and the Unified Patent Court. Learn about the concept of the EU Patent Package, the regulations on the Unitary Patent, and the structure of the Unified Patent Court. The workshop will take place on Thursday June 2nd 2016 between 5 - 7 pm in Park Inn by Radisson Luxembourg City (45-47 Avenue de la Gare, Public parking available). The agenda comprises topics such as an introduction of the Unitary Patent Court (UPC), the regulation on the Unitary Patent (UPR) and the agreement on a Unified Patent Court (UPCA).

This workshop will quickly and effectively outline the main characteristics, goals and purposes of the future Unitary Patent and the Unified Patent Court. Our expert speaker will share the latest developments with you and present some interesting case studies.

After the workshop, we invite you to further discuss this topic with your colleagues and network over a drink.

The Dennemeyer Group organizes a complementary workshop for everyone interested in the future Unitary Patent and the Unified Patent Court. Learn about the concept of the EU Patent Package, the regulations on the Unitary Patent, and the structure of the Unified Patent Court. The workshop will take place on Thursday June 2nd 2016 between 5 - 7 pm in Park Inn by Radisson Luxembourg City (45-47 Avenue de la Gare, Public parking available). The agenda comprises topics such as an introduction of the Unitary Patent Court (UPC), the regulation on the Unitary Patent (UPR) and the agreement on a Unified Patent Court (UPCA).

This workshop will quickly and effectively outline the main characteristics, goals and purposes of the future Unitary Patent and the Unified Patent Court. Our expert speaker will share the latest developments with you and present some interesting case studies.

After the workshop, we invite you to further discuss this topic with your colleagues and network over a drink.

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Save 100%? Did you have to read that twice? Can you really recoup up to 100% of the PCT and EP search procedure costs?

Yes, you can.

On April 14, 2016, Dr. Robert Fichter from Dennemeyer & Associates hosted a short webinar to explain this little-publicized strategy. In this webinar you will discover three key items:

  • How you can receive a refund of up to 100% on search fees. [Hint: It has to do with Luxembourg's relationship with the EPO]
  • Key strategies to receive this refund.
  • A description of the procedures to follow.

This was then followed by an interactive question and answer session with Dr. Fichter.

Watch the recorded, on-demand webinar today. Don’t leave saving of upwards of 1500 EUR on the table. Simply watch this short webinar to discover how.

Save 100%? Did you have to read that twice? Can you really recoup up to 100% of the PCT and EP search procedure costs?

Yes, you can.

On April 14, 2016, Dr. Robert Fichter from Dennemeyer & Associates hosted a short webinar to explain this little-publicized strategy. In this webinar you will discover three key items:

  • How you can receive a refund of up to 100% on search fees. [Hint: It has to do with Luxembourg's relationship with the EPO]
  • Key strategies to receive this refund.
  • A description of the procedures to follow.

This was then followed by an interactive question and answer session with Dr. Fichter.

Watch the recorded, on-demand webinar today. Don’t leave saving of upwards of 1500 EUR on the table. Simply watch this short webinar to discover how.

Read more

Meet our IP experts at the 138th INTA Annual Meeting

The academy awards are over, now the stage is set for the International Trademark Association’s Annual Meeting (INTA). As every year the Dennemeyer Group presents the full bandwidth of a global provider of IP services and software solutions at the 138th INTA Annual Meeting. Between May 22nd and 25th in the West Building of the Orange County Convention Center (OCCC) in Orlando, Florida, Dennemeyer welcomes you to booths 801 and 815. Have a break at our Café and discuss all aspects of IP management with our experts in a relaxed atmosphere. Besides we have prepared a special cinematic highlight for you – of course not without a decent amount of popcorn!

After the show test your IP knowledge in our daily Dennemeyer IP Quiz championships and win exclusive prizes for your family at home. Don’t be the only one to profit from your visit at Dennemeyer!

If you would like to arrange a meeting with our experts or a demonstration of our software tools or online portals before the conference, please contact us at inta@dennemeyer.com

Don’t miss the show!

Meet our IP experts at the 138th INTA Annual Meeting

The academy awards are over, now the stage is set for the International Trademark Association’s Annual Meeting (INTA). As every year the Dennemeyer Group presents the full bandwidth of a global provider of IP services and software solutions at the 138th INTA Annual Meeting. Between May 22nd and 25th in the West Building of the Orange County Convention Center (OCCC) in Orlando, Florida, Dennemeyer welcomes you to booths 801 and 815. Have a break at our Café and discuss all aspects of IP management with our experts in a relaxed atmosphere. Besides we have prepared a special cinematic highlight for you – of course not without a decent amount of popcorn!

After the show test your IP knowledge in our daily Dennemeyer IP Quiz championships and win exclusive prizes for your family at home. Don’t be the only one to profit from your visit at Dennemeyer!

If you would like to arrange a meeting with our experts or a demonstration of our software tools or online portals before the conference, please contact us at inta@dennemeyer.com

Don’t miss the show!

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What’s your superpower: Patents or Trademarks? Now you can use it to win an iPad in Dennemeyer’s IP Quiz Spring Championship.

Starting April 11th your knowledge power will be tested in two parallel rounds (one for each category) and the two leading players of Patents and Trademarks will compete in the Final Battle, which will be a combination of both categories, at the end of May. Win the battle and the iPad is yours!

How does it work?

  1. Create a new user account or use your social media account to login;
  2. You can play only once;
  3. You have 1 minute and 1 correct answer for each of the 20 questions;
  4. Be fast in choosing the correct answer and you’ll get extra points;
  5. If you start a championship and quit before completing the game, you will not be able to start again.

Come and play at: https://quiz.dennemeyer.com/game !

What’s your superpower: Patents or Trademarks? Now you can use it to win an iPad in Dennemeyer’s IP Quiz Spring Championship.

Starting April 11th your knowledge power will be tested in two parallel rounds (one for each category) and the two leading players of Patents and Trademarks will compete in the Final Battle, which will be a combination of both categories, at the end of May. Win the battle and the iPad is yours!

How does it work?

  1. Create a new user account or use your social media account to login;
  2. You can play only once;
  3. You have 1 minute and 1 correct answer for each of the 20 questions;
  4. Be fast in choosing the correct answer and you’ll get extra points;
  5. If you start a championship and quit before completing the game, you will not be able to start again.

Come and play at: https://quiz.dennemeyer.com/game !

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This year's at Dennemeyer Workshop on the New EU TM Package in Paris on April 7.

This year's at Dennemeyer Workshop on the New EU TM Package in Paris on April 7.

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From 20 to 22 March this year, US President Obama visited Cuba. Since 1959 he was the first US President to visit this mother country of cigars and rum. However, the arguably most powerful man on earth was only an opening act. On 25 March, the Rolling Stones played their first ever concert in Havana . One takeaway is that US Presidents come and go - but the Stones stay forever. Another crystal clear message is that Cuba is opening-up.

This détente could certainly develop into a fresh and long-lasting period of improving business relations with Cuba. Exporting companies should therefore start rethinking about their Intellectual Property strategy for the Cuban market. The first question is of course which protective IP rights are available in Cuba. The island state is a member of the Paris Convention and a contracting state of all major WIPO‑administered treaties including the Patent Cooperation Treaty, the Madrid Agreement and the Madrid Protocol (click here for an overview) .

We at Dennemeyer have long-standing contacts with our colleagues in Cuba and are looking forward to play a part in the improvement of the economic relations with Cuba, with our focus in this regard being of course Intellectual Property. But we will also keep monitoring other developments on Cuba. Rumor has it that Sir Paul McCartney will be the next music legend to pay a visit to the Island for a gig. Stay tuned!

Check out our webinar to find out more about the upcoming changes to trademark protection in Cuba and Iran.

For further information and help, please feel free to contact ckoester@dennemeyer-law.com.

From 20 to 22 March this year, US President Obama visited Cuba. Since 1959 he was the first US President to visit this mother country of cigars and rum. However, the arguably most powerful man on earth was only an opening act. On 25 March, the Rolling Stones played their first ever concert in Havana . One takeaway is that US Presidents come and go - but the Stones stay forever. Another crystal clear message is that Cuba is opening-up.

This détente could certainly develop into a fresh and long-lasting period of improving business relations with Cuba. Exporting companies should therefore start rethinking about their Intellectual Property strategy for the Cuban market. The first question is of course which protective IP rights are available in Cuba. The island state is a member of the Paris Convention and a contracting state of all major WIPO‑administered treaties including the Patent Cooperation Treaty, the Madrid Agreement and the Madrid Protocol (click here for an overview) .

We at Dennemeyer have long-standing contacts with our colleagues in Cuba and are looking forward to play a part in the improvement of the economic relations with Cuba, with our focus in this regard being of course Intellectual Property. But we will also keep monitoring other developments on Cuba. Rumor has it that Sir Paul McCartney will be the next music legend to pay a visit to the Island for a gig. Stay tuned!

Check out our webinar to find out more about the upcoming changes to trademark protection in Cuba and Iran.

For further information and help, please feel free to contact ckoester@dennemeyer-law.com.

Read more

For businesses today it is critical to safeguard sensitive data against the growing number of online and natural threats. For data security, the operative words are confidence and transparency. Dennemeyer remains dedicated to security and takes extensive technical measures to protect client data when managing intellectual property portfolios.

  • Physical Location: All of our servers are located in Luxembourg and are Tier 4 certified; this ensures that clients have maximum reliability, quality, and security. Being the strictest certification level, Tier 4 data centers offer the highest redundancy standards, levels of availability, and least amount of hours of interruption per year.  Leading the data center industry, Luxembourg’s data protection standards are among the highest in the world due to the stringent service and technical performance levels required.
  • Access: Dennemeyer is ISO 27001 certified. Our focus is to protect the confidentiality, availability, and integrity of the data that comprises your IP portfolios. We take the protection of your information seriously and have robust systems in place to manage and address risks that threaten data.
  • Data in Motion: We also minimize risk and maximize security through our Virtual Private Network. Offering a secure connection in which all network traffic is encrypted is a matter of course.

Although this list isn’t exhaustive, Dennemeyer operates a resilient, high security, and high-availability architecture through certified procedures to ensure that service performance continues to meet client expectations. Due to the importance of the topic Dennemeyer will keep on publishing news and articles on data security and keep you informed.

Check out the data sheet for more information regarding the security of our hosted DIAMS iQ installations.

For businesses today it is critical to safeguard sensitive data against the growing number of online and natural threats. For data security, the operative words are confidence and transparency. Dennemeyer remains dedicated to security and takes extensive technical measures to protect client data when managing intellectual property portfolios.

  • Physical Location: All of our servers are located in Luxembourg and are Tier 4 certified; this ensures that clients have maximum reliability, quality, and security. Being the strictest certification level, Tier 4 data centers offer the highest redundancy standards, levels of availability, and least amount of hours of interruption per year.  Leading the data center industry, Luxembourg’s data protection standards are among the highest in the world due to the stringent service and technical performance levels required.
  • Access: Dennemeyer is ISO 27001 certified. Our focus is to protect the confidentiality, availability, and integrity of the data that comprises your IP portfolios. We take the protection of your information seriously and have robust systems in place to manage and address risks that threaten data.
  • Data in Motion: We also minimize risk and maximize security through our Virtual Private Network. Offering a secure connection in which all network traffic is encrypted is a matter of course.

Although this list isn’t exhaustive, Dennemeyer operates a resilient, high security, and high-availability architecture through certified procedures to ensure that service performance continues to meet client expectations. Due to the importance of the topic Dennemeyer will keep on publishing news and articles on data security and keep you informed.

Check out the data sheet for more information regarding the security of our hosted DIAMS iQ installations.

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Sebastian Deck (38) has joined Dennemeyer & Co GmbH as Global Head of Marketing and Communications in the company’s Munich office. He leads the worldwide marketing and communications activities of the Dennemeyer Group, reporting directly to CEO Dr Reinhold Nowak in Luxembourg. In this role he will also be the contact person for all media inquiries.

“Dennemeyer Group continues to build on its position as a leading provider of professional services and software solutions focused on intellectual property (IP). Its rapid growth and its presence in fourteen countries around the world have resulted in a need for strategic structuring of global marketing and communications activities, as well as safeguarding a uniform global corporate identity”, says Nowak. The mainstays of professional services and software solutions for the management of patents and trademarks will in future be supplemented in particular by business ventures including consultancy and seminars on intellectual property. “Mr. Deck can look back over many years of experience, particularly in the field of marketing and communications for globally active consulting firms, and will play an active role in driving forward the expansion of the Dennemeyer Group to become the world’s leading brand for the management of IP.”

From 2011 to 2015, Sebastian Deck held the position of Head of Marketing & PR for the organisation and strategy consultancy Camelot Management Consultants, prior to which he spent over three years in charge of the press relations work of the industrial and functional competence centres of the strategy consultancy Roland Berger Strategy Consultants. Previously he had worked as an independent journalist for media including the Bavarian broadcaster Bayerischer Rundfunk and the Munich-based broadsheet Süddeutsche Zeitung. After graduating in economic and social history and communication science, Sebastian Deck trained as an editor at the German School of Journalism in Munich, combining this with postgraduate studies in Practical Journalism at Ludwig-Maximilian University of Munich.

Sebastian Deck (38) has joined Dennemeyer & Co GmbH as Global Head of Marketing and Communications in the company’s Munich office. He leads the worldwide marketing and communications activities of the Dennemeyer Group, reporting directly to CEO Dr Reinhold Nowak in Luxembourg. In this role he will also be the contact person for all media inquiries.

“Dennemeyer Group continues to build on its position as a leading provider of professional services and software solutions focused on intellectual property (IP). Its rapid growth and its presence in fourteen countries around the world have resulted in a need for strategic structuring of global marketing and communications activities, as well as safeguarding a uniform global corporate identity”, says Nowak. The mainstays of professional services and software solutions for the management of patents and trademarks will in future be supplemented in particular by business ventures including consultancy and seminars on intellectual property. “Mr. Deck can look back over many years of experience, particularly in the field of marketing and communications for globally active consulting firms, and will play an active role in driving forward the expansion of the Dennemeyer Group to become the world’s leading brand for the management of IP.”

From 2011 to 2015, Sebastian Deck held the position of Head of Marketing & PR for the organisation and strategy consultancy Camelot Management Consultants, prior to which he spent over three years in charge of the press relations work of the industrial and functional competence centres of the strategy consultancy Roland Berger Strategy Consultants. Previously he had worked as an independent journalist for media including the Bavarian broadcaster Bayerischer Rundfunk and the Munich-based broadsheet Süddeutsche Zeitung. After graduating in economic and social history and communication science, Sebastian Deck trained as an editor at the German School of Journalism in Munich, combining this with postgraduate studies in Practical Journalism at Ludwig-Maximilian University of Munich.

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On February 18, our Polish office together with MARQUES organized workshops on Coexistence Agreements directed to people from industry as well as patent and trademark attorneys in Poland. The workshops took place in Warsaw in the Sheraton hotel. At the first part of the workshops, Ms. Monika Stępień and Joanna Kowalewska had a one-hour presentation outlining the most important things to take into consideration when drafting and negotiating coexistence agreements.

Afterwards, participants were divided into two groups representing two different companies interested in extending their current activity, but their peaceful existence in the European market was not possible without prior coexistence agreement conclusion. Although at the beginning it seemed impossible to reach an agreement in this regard, we are happy to inform that after a long and difficult discussion both groups managed to sign a coexistence agreement satisfactory for both sides.

We received positive feedback from participants who especially appreciated the possibility to actively participate in the discussion. Read more about the workshop on MARQUES’ newsletter.

On February 18, our Polish office together with MARQUES organized workshops on Coexistence Agreements directed to people from industry as well as patent and trademark attorneys in Poland. The workshops took place in Warsaw in the Sheraton hotel. At the first part of the workshops, Ms. Monika Stępień and Joanna Kowalewska had a one-hour presentation outlining the most important things to take into consideration when drafting and negotiating coexistence agreements.

Afterwards, participants were divided into two groups representing two different companies interested in extending their current activity, but their peaceful existence in the European market was not possible without prior coexistence agreement conclusion. Although at the beginning it seemed impossible to reach an agreement in this regard, we are happy to inform that after a long and difficult discussion both groups managed to sign a coexistence agreement satisfactory for both sides.

We received positive feedback from participants who especially appreciated the possibility to actively participate in the discussion. Read more about the workshop on MARQUES’ newsletter.

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Leading companies discussed their real world examples Live

Dennemeyer is hosting a series of forums on IP budget best practices in Houston, Palo Alto, Chicago, and Boston. The Forums feature panel discussions and explore and discuss best practices for managing IP costs.

Hear real world experiences from leading companies on how they have managed their IP budgets. Panalists include IP industry leaders from Novartis, NetApp, Google, iHeart Media, Whirlpool, BP America, and many more.

These complimentary events are approved for 3.0 CLE credit in Texas and are pending approval in California and Illinois.

Space at each location is very limit. Learn more and reserve your spot today.

Learn moreRSVP

Dates/Locations:

Wednesday, March 30, 2016 - Houston, Texas

Hotel Derek

2525 West Loop S, Houston, TX 77027

Tuesday, April 5, 2016 - Palo Alto, California

Sheraton Palo Alto
625 El Camino Real, Palo Alto, CA 94301

Wednesday, April 13, 2016 - Chicago, Illinois

181 W Madison St, Suite 3100

Chicago, IL 60602

Wednesday, April 20, 2016 - Boston, Massachusetts

Wyndham Boston Beacon Hill
5 Blossom St., Boston, MA 02114

Leading companies discussed their real world examples Live

Dennemeyer is hosting a series of forums on IP budget best practices in Houston, Palo Alto, Chicago, and Boston. The Forums feature panel discussions and explore and discuss best practices for managing IP costs.

Hear real world experiences from leading companies on how they have managed their IP budgets. Panalists include IP industry leaders from Novartis, NetApp, Google, iHeart Media, Whirlpool, BP America, and many more.

These complimentary events are approved for 3.0 CLE credit in Texas and are pending approval in California and Illinois.

Space at each location is very limit. Learn more and reserve your spot today.

Learn moreRSVP

Dates/Locations:

Wednesday, March 30, 2016 - Houston, Texas

Hotel Derek

2525 West Loop S, Houston, TX 77027

Tuesday, April 5, 2016 - Palo Alto, California

Sheraton Palo Alto
625 El Camino Real, Palo Alto, CA 94301

Wednesday, April 13, 2016 - Chicago, Illinois

181 W Madison St, Suite 3100

Chicago, IL 60602

Wednesday, April 20, 2016 - Boston, Massachusetts

Wyndham Boston Beacon Hill
5 Blossom St., Boston, MA 02114

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We are proud to announce that our United States offices, which include Dennemeyer and Company, as well as Dennemeyer & Associates are moving to a new office location effective February 1, 2016.

This move signals the rapid growth experienced over the past year. The new address is 181 W. Madison, Suite 4500, Chicago IL 60602.

Dennemeyer U.S. continues to expand rapidly. In 2015, a new COO, Managing Director and multiple new Patent and Trademark staff members came on board, extending our customers’ direct access to key customer service resources in US time-zones. This growth is projected to continue throughout 2016.

“We are excited to move to space that can accommodate our growing staff. As we continue to grow and develop value added services for customers, we know the new office will be a fantastic home base,” said Cary Levitt, Chief Operating Officer, United States.

Please note that office numbers will remain the same.

  • Phone: +1 312 380 6500
  • Fax: +1 312 419 9440

Should you have any questions on the relocation, please feel free to contact us. We look forward to seeing and serving you at the improved office surroundings.

We are proud to announce that our United States offices, which include Dennemeyer and Company, as well as Dennemeyer & Associates are moving to a new office location effective February 1, 2016.

This move signals the rapid growth experienced over the past year. The new address is 181 W. Madison, Suite 4500, Chicago IL 60602.

Dennemeyer U.S. continues to expand rapidly. In 2015, a new COO, Managing Director and multiple new Patent and Trademark staff members came on board, extending our customers’ direct access to key customer service resources in US time-zones. This growth is projected to continue throughout 2016.

“We are excited to move to space that can accommodate our growing staff. As we continue to grow and develop value added services for customers, we know the new office will be a fantastic home base,” said Cary Levitt, Chief Operating Officer, United States.

Please note that office numbers will remain the same.

  • Phone: +1 312 380 6500
  • Fax: +1 312 419 9440

Should you have any questions on the relocation, please feel free to contact us. We look forward to seeing and serving you at the improved office surroundings.

Read more

The European Community Trademark Law has recently undergone extensive changes to its underlying provisions, namely the EU Trademark Regulation and the corresponding EU Trademark Directive. The new legislation enters into force on 23 March 2016.

Besides renaming OHIM to the European Union Intellectual Property Office (EUIPO) and the Community trade mark to the European Union trade mark, a major impact of these legal reforms will be the scope of protection of CTMs applied for the entire class headings of goods and services.

Trademarks falling into the following cumulative categories will be affected:

  • CTMs filed before 22 June 2012 and registered before 23 March 2016
  • CTMs claiming protection of entire class headings according  to the Nice Edition applicable at the time of  the filing date

All previous Editions of the Nice Classification can be found on the WIPO website. In order to avoid inadequate scope of protection, the owners of the above categorized trademarks have been given a possibility to file a declaration to the Office by 24 September 2016, specifying the exact goods and services intended to be covered by that application.

If no Declaration is filed before the deadline, those trademarks will be deemed to cover only the goods and services described in the literal meaning of the class heading.

Example: A trademark registered with the heading of class 45 “Education; providing of training; entertainment; sporting and cultural activities. (Nice 10th edition), will not be protected anymore for “translation services”, also belonging to the alphabetical list of that class, unless explicitly specified.

Should you need assistance, our trademark attorneys at Dennemeyer & Associates remain available to assist you. Please do not hesitate to contact us at: info@dennemeyer-law.com.

The European Community Trademark Law has recently undergone extensive changes to its underlying provisions, namely the EU Trademark Regulation and the corresponding EU Trademark Directive. The new legislation enters into force on 23 March 2016.

Besides renaming OHIM to the European Union Intellectual Property Office (EUIPO) and the Community trade mark to the European Union trade mark, a major impact of these legal reforms will be the scope of protection of CTMs applied for the entire class headings of goods and services.

Trademarks falling into the following cumulative categories will be affected:

  • CTMs filed before 22 June 2012 and registered before 23 March 2016
  • CTMs claiming protection of entire class headings according  to the Nice Edition applicable at the time of  the filing date

All previous Editions of the Nice Classification can be found on the WIPO website. In order to avoid inadequate scope of protection, the owners of the above categorized trademarks have been given a possibility to file a declaration to the Office by 24 September 2016, specifying the exact goods and services intended to be covered by that application.

If no Declaration is filed before the deadline, those trademarks will be deemed to cover only the goods and services described in the literal meaning of the class heading.

Example: A trademark registered with the heading of class 45 “Education; providing of training; entertainment; sporting and cultural activities. (Nice 10th edition), will not be protected anymore for “translation services”, also belonging to the alphabetical list of that class, unless explicitly specified.

Should you need assistance, our trademark attorneys at Dennemeyer & Associates remain available to assist you. Please do not hesitate to contact us at: info@dennemeyer-law.com.

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Do you know the costs of publishing a European patent validation in Morocco? Since the beginning of March 2015, European patents can be validated in Morocco according to the agreement between the European Patent Organisation and the government of the Kingdom of Morocco. On February 5th 2015 the European Patent Office (EPO) and the Office Marocain de la Propriété Industrielle et Commerciale (OMPIC) have agreed to fix the validation fee for Morocco at EUR 240. But the exact fees for the publication of a validation have not been published by the EPO until now.

As leading provider of professional services and solutions for the IP sector, Dennemeyer has found out the publication fee prior to its official publication. In short: The OMPIC has indicated that publication fee for a European application or patent will be 1200 Moroccan Dirham - which equals 110.56 Euro (18.02.2016). “This information enables us to provide our clients with full transparency on official fees regarding the validation of European Patents in Morocco,” states Dr. Robert Fichter, Director of Dennemeyer & Associates. “And cost transparency is a matter that has become more and more important as clients are not willing to accept any hidden fees in the global management of their intellectual property any more.”

The complete OMPIC fee structure can be downloaded here.

Read more about European patent validations in Morocco on the EPO web site. To find out more about Dennemeyer’s EP Validations service, click here or contact us by e-mail at validations@dennemeyer-law.com.

Do you know the costs of publishing a European patent validation in Morocco? Since the beginning of March 2015, European patents can be validated in Morocco according to the agreement between the European Patent Organisation and the government of the Kingdom of Morocco. On February 5th 2015 the European Patent Office (EPO) and the Office Marocain de la Propriété Industrielle et Commerciale (OMPIC) have agreed to fix the validation fee for Morocco at EUR 240. But the exact fees for the publication of a validation have not been published by the EPO until now.

As leading provider of professional services and solutions for the IP sector, Dennemeyer has found out the publication fee prior to its official publication. In short: The OMPIC has indicated that publication fee for a European application or patent will be 1200 Moroccan Dirham - which equals 110.56 Euro (18.02.2016). “This information enables us to provide our clients with full transparency on official fees regarding the validation of European Patents in Morocco,” states Dr. Robert Fichter, Director of Dennemeyer & Associates. “And cost transparency is a matter that has become more and more important as clients are not willing to accept any hidden fees in the global management of their intellectual property any more.”

The complete OMPIC fee structure can be downloaded here.

Read more about European patent validations in Morocco on the EPO web site. To find out more about Dennemeyer’s EP Validations service, click here or contact us by e-mail at validations@dennemeyer-law.com.

Read more

As a result of the Iran nuclear deal signed last year, economic sanctions on the Middle-Eastern country have been lifted on January 16, 2016. Governmental authorities and industry organizations were quick to welcome this step in opening up the Iranian economy to international trade and investment. For example, the German-Iranian Chamber of Commerce and the European-Iranian Business Alliance released statements expressing their hope that business relations with Iran will be flourishing again in the future.

With the start of a hopefully new and long-lasting period of good business relations with Iran, exporting companies should start rethinking about their intellectual property strategy for the Iranian market. The first question is of course which protective IP rights are available in Iran. Actually, Iran is a member of the Paris Convention and a contracting state of all major treaties administered by WIPO, including the Patent Cooperation Treaty, the Madrid Agreement and the Madrid Protocol (click here for an overview).

We at Dennemeyer have a long-standing relationship with our colleagues in Iran. Furthermore, we have experienced that centralized formalities procedures, especially with regards to notarization, can help clients move forward their IP projects almost everywhere and in fact in Iran. During the sanctions, we helped clients, some of them U.S.-based, with filing and prosecuting intellectual property rights in Iran including patents concerning the oil and gas industry. With these recent developments in mind, we are looking forward to playing our part in normalizing the economic relations with Iran, with our focus being of course the field of intellectual property.

For further information and help, please feel free to contact me via e-mail: ckoester@dennemeyer-law.com.

As a result of the Iran nuclear deal signed last year, economic sanctions on the Middle-Eastern country have been lifted on January 16, 2016. Governmental authorities and industry organizations were quick to welcome this step in opening up the Iranian economy to international trade and investment. For example, the German-Iranian Chamber of Commerce and the European-Iranian Business Alliance released statements expressing their hope that business relations with Iran will be flourishing again in the future.

With the start of a hopefully new and long-lasting period of good business relations with Iran, exporting companies should start rethinking about their intellectual property strategy for the Iranian market. The first question is of course which protective IP rights are available in Iran. Actually, Iran is a member of the Paris Convention and a contracting state of all major treaties administered by WIPO, including the Patent Cooperation Treaty, the Madrid Agreement and the Madrid Protocol (click here for an overview).

We at Dennemeyer have a long-standing relationship with our colleagues in Iran. Furthermore, we have experienced that centralized formalities procedures, especially with regards to notarization, can help clients move forward their IP projects almost everywhere and in fact in Iran. During the sanctions, we helped clients, some of them U.S.-based, with filing and prosecuting intellectual property rights in Iran including patents concerning the oil and gas industry. With these recent developments in mind, we are looking forward to playing our part in normalizing the economic relations with Iran, with our focus being of course the field of intellectual property.

For further information and help, please feel free to contact me via e-mail: ckoester@dennemeyer-law.com.

Read more

In December 2015 we pledged to donate 1 euro for every correct answer submitted in our IP Quiz. Thanks to the overwhelming response we received from players, we have made a donation totaling 15,427 euros to the German office of Doctors Without Borders.

The donated amount was handed over on January 12, in the presence of Dr. Reinhold Nowak, CEO of Dennemeyer IP Solutions, and Dr. Robert Fichter, director of Dennemeyer & Associates. Doctors Without Borders was represented by Andrea Stegmeir, who shared with us her first-hand experience helping those in need in Angola.

IP quiz check handover

Doctors Without Borders is an international humanitarian organisation providing assistance to vulnerable communities, victims of natural disasters and armed conflicts. Every year Doctors Without Borders sends around 2,700 doctors, nurses, logisticians, water-and-sanitation experts, administrators and other professionals to work alongside approximately 31,000 locally hired staff. Together they run medical projects in more than 60 countries around the world.

The organisation spent 858 million euros on humanitarian activities in 2014; performing over 8 million outpatient consultations, aiding over 217 thousand severely malnourished children, and performing over 81,000 major surgical interventions.  Visit the organization’s web site to find out more about them and their areas of impact.

According to the organization’s records, the amount donated can be used for:

  • treating up to 7,500 children with meningitis, or
  • caring for up to 550 patients suffering for tuberculosis, or
  • supplying up to 150 HIV/AIDS patients with antiretroviral drugs for a year, or
  • vaccinating over 12,000 people against measles.

We are truly overwhelmed by the amazing response we received from our fellow industry professionals, and would like to thank everybody who played the IP Quiz over December.

In December 2015 we pledged to donate 1 euro for every correct answer submitted in our IP Quiz. Thanks to the overwhelming response we received from players, we have made a donation totaling 15,427 euros to the German office of Doctors Without Borders.

The donated amount was handed over on January 12, in the presence of Dr. Reinhold Nowak, CEO of Dennemeyer IP Solutions, and Dr. Robert Fichter, director of Dennemeyer & Associates. Doctors Without Borders was represented by Andrea Stegmeir, who shared with us her first-hand experience helping those in need in Angola.

IP quiz check handover

Doctors Without Borders is an international humanitarian organisation providing assistance to vulnerable communities, victims of natural disasters and armed conflicts. Every year Doctors Without Borders sends around 2,700 doctors, nurses, logisticians, water-and-sanitation experts, administrators and other professionals to work alongside approximately 31,000 locally hired staff. Together they run medical projects in more than 60 countries around the world.

The organisation spent 858 million euros on humanitarian activities in 2014; performing over 8 million outpatient consultations, aiding over 217 thousand severely malnourished children, and performing over 81,000 major surgical interventions.  Visit the organization’s web site to find out more about them and their areas of impact.

According to the organization’s records, the amount donated can be used for:

  • treating up to 7,500 children with meningitis, or
  • caring for up to 550 patients suffering for tuberculosis, or
  • supplying up to 150 HIV/AIDS patients with antiretroviral drugs for a year, or
  • vaccinating over 12,000 people against measles.

We are truly overwhelmed by the amazing response we received from our fellow industry professionals, and would like to thank everybody who played the IP Quiz over December.

Read more

Trade marks frequently rank among a company’s most valuable assets. Marks operate as source identifiers by distinguishing the goods or services of one business from those of another, while facilitating consumers’ purchasing decisions. Despite trade marks serving as an essential component of a company’s corporate arsenal, even the most seasoned executives, lawyers and marketing officers can be susceptible to several common myths and misconceptions regarding US trade mark law and practice. Below are 12 costly and commonly shared trade mark misunderstandings.

1. All trade marks are created equal

Not all trade marks are created equal. To evaluate the strength of a proposed mark, it is critical to understand that trade marks are viewed within a spectrum of distinctiveness. Ranging from generic to arbitrary or fanciful, a mark’s scope of protection is categorised along a vibrant continuum. Ranging from unprotectable to highly distinctive, the level of descriptiveness or distinctiveness may be appraised by examining the mark in  relation to the goods or services offered in connection with that designation. A trade mark may be compartmentalised into four main categories: generic, descriptive, suggestive or arbitrary/fanciful.

A) Generic: On one end of the distinctiveness spectrum, generic terms are common words that name goods or services; these are incapable of functioning as trade marks. Registration of a generic term would prevent others from rightfully utilising the common word and serve no source identification function.

B) Descriptive: Moving up the band, a mark is considered merely descriptive if the primary significance of the term immediately describes an ingredient, quality, characteristic, feature, function or purpose of the specifically delineated goods or services. Although adopting a descriptive mark simplifies marketing efforts by conveying features of the product or service to the purchaser, it also presents hurdles at both the registration and enforcement stages. Common examples of descriptive marks include Arthriticare (for arthritis medication), Car Freshener (for car deodoriser), and World Book (for encyclopedias).

C) Suggestive: Suggestive trade marks indirectly refer to the goods or services with which they are associated. The mark requires an intellectual leap, imagination, thought or perception in order for the consumer to reach a conclusion as to the nature of the goods or services. For example, Coppertone (for tanning lotion) and Chicken Of The Sea (for tuna) are considered suggestive marks. Traditionally, marketing professionals prefer suggestive marks due to their inherent ability to evoke ideas in the minds of consumers, suggesting the nature of the goods or services offered. By subconsciously linking a mark to a product or service, this approach enhances brand awareness while reducing costs associated with marketing campaigns. However, a fine line separates descriptive and suggestive trade marks. What a marketer may deem suggestive, the examining attorney may find descriptive.

D) Arbitrary or fanciful: Finally, arbitrary or fanciful marks are afforded the broadest scope of protection. An arbitrary mark is a word that exists but has no meaning when used on the product itself, whereas a fanciful mark is a word not recognised by the dictionary. For instance, the marks Pepsi and Exxon are deemed fanciful because they have no meaning or common usage. Alternatively, Apple used in connection with computers is considered an arbitrary mark because it is a known term used in an uncommon fashion.

2. Searched the USPTO and no one has registered the mark – let’s move forward.

Merely performing a quick search for the proposed mark on the United States Patent and Trademark Office (USPTO) Electronic Search System is insufficient to determine whether the trade mark is available.

For instance, other companies may own common law rights that compromise the value and availability of a trade mark. Common law rights arise from actual use of a mark in commerce even absent federal registration. Although federal registration affords additional rights that are unavailable under the common law scheme, rights still develop without registration. These limited rights are cabined to the geographic area in which the mark is used. Within that specific territory, rights are based on the priority of use of a mark. Occasionally, a federal registrant may not be the first user of a trade mark in a specific territory; therefore, an unregistered prior user may enjoy superior rights. Thus, when applying for a trade mark, even a company with common law rights may file an opposition based on first use in commerce.

Further, if the USPTO has deemed a trade mark cancelled or abandoned, that designation does not ensure that your agency may use the mark without complications. A mark may be deemed cancelled or abandoned for a bundle of reasons. As stated above, trade mark rights continue at the common law level if a company continues to employ their mark in commerce. Marketers should not take the USPTO’s designation that a mark is cancelled or abandoned as absolute without investigating the actual use of the mark in commerce.

The USPTO Trademark Electronic Search System is only one tool used to determine the registrability of a proposed mark. Whether you hire a trade mark attorney or purchase a professional clearance search, multiple considerations must be made when determining a mark’s registrability. There are many sources in addition to the USPTO, such as common law sources, state trade mark registries and industry publications.

This article originally appeared in Managing Intellectual Property, December 2015 / January 2016. Read the full article as PDF.

Trade marks frequently rank among a company’s most valuable assets. Marks operate as source identifiers by distinguishing the goods or services of one business from those of another, while facilitating consumers’ purchasing decisions. Despite trade marks serving as an essential component of a company’s corporate arsenal, even the most seasoned executives, lawyers and marketing officers can be susceptible to several common myths and misconceptions regarding US trade mark law and practice. Below are 12 costly and commonly shared trade mark misunderstandings.

1. All trade marks are created equal

Not all trade marks are created equal. To evaluate the strength of a proposed mark, it is critical to understand that trade marks are viewed within a spectrum of distinctiveness. Ranging from generic to arbitrary or fanciful, a mark’s scope of protection is categorised along a vibrant continuum. Ranging from unprotectable to highly distinctive, the level of descriptiveness or distinctiveness may be appraised by examining the mark in  relation to the goods or services offered in connection with that designation. A trade mark may be compartmentalised into four main categories: generic, descriptive, suggestive or arbitrary/fanciful.

A) Generic: On one end of the distinctiveness spectrum, generic terms are common words that name goods or services; these are incapable of functioning as trade marks. Registration of a generic term would prevent others from rightfully utilising the common word and serve no source identification function.

B) Descriptive: Moving up the band, a mark is considered merely descriptive if the primary significance of the term immediately describes an ingredient, quality, characteristic, feature, function or purpose of the specifically delineated goods or services. Although adopting a descriptive mark simplifies marketing efforts by conveying features of the product or service to the purchaser, it also presents hurdles at both the registration and enforcement stages. Common examples of descriptive marks include Arthriticare (for arthritis medication), Car Freshener (for car deodoriser), and World Book (for encyclopedias).

C) Suggestive: Suggestive trade marks indirectly refer to the goods or services with which they are associated. The mark requires an intellectual leap, imagination, thought or perception in order for the consumer to reach a conclusion as to the nature of the goods or services. For example, Coppertone (for tanning lotion) and Chicken Of The Sea (for tuna) are considered suggestive marks. Traditionally, marketing professionals prefer suggestive marks due to their inherent ability to evoke ideas in the minds of consumers, suggesting the nature of the goods or services offered. By subconsciously linking a mark to a product or service, this approach enhances brand awareness while reducing costs associated with marketing campaigns. However, a fine line separates descriptive and suggestive trade marks. What a marketer may deem suggestive, the examining attorney may find descriptive.

D) Arbitrary or fanciful: Finally, arbitrary or fanciful marks are afforded the broadest scope of protection. An arbitrary mark is a word that exists but has no meaning when used on the product itself, whereas a fanciful mark is a word not recognised by the dictionary. For instance, the marks Pepsi and Exxon are deemed fanciful because they have no meaning or common usage. Alternatively, Apple used in connection with computers is considered an arbitrary mark because it is a known term used in an uncommon fashion.

2. Searched the USPTO and no one has registered the mark – let’s move forward.

Merely performing a quick search for the proposed mark on the United States Patent and Trademark Office (USPTO) Electronic Search System is insufficient to determine whether the trade mark is available.

For instance, other companies may own common law rights that compromise the value and availability of a trade mark. Common law rights arise from actual use of a mark in commerce even absent federal registration. Although federal registration affords additional rights that are unavailable under the common law scheme, rights still develop without registration. These limited rights are cabined to the geographic area in which the mark is used. Within that specific territory, rights are based on the priority of use of a mark. Occasionally, a federal registrant may not be the first user of a trade mark in a specific territory; therefore, an unregistered prior user may enjoy superior rights. Thus, when applying for a trade mark, even a company with common law rights may file an opposition based on first use in commerce.

Further, if the USPTO has deemed a trade mark cancelled or abandoned, that designation does not ensure that your agency may use the mark without complications. A mark may be deemed cancelled or abandoned for a bundle of reasons. As stated above, trade mark rights continue at the common law level if a company continues to employ their mark in commerce. Marketers should not take the USPTO’s designation that a mark is cancelled or abandoned as absolute without investigating the actual use of the mark in commerce.

The USPTO Trademark Electronic Search System is only one tool used to determine the registrability of a proposed mark. Whether you hire a trade mark attorney or purchase a professional clearance search, multiple considerations must be made when determining a mark’s registrability. There are many sources in addition to the USPTO, such as common law sources, state trade mark registries and industry publications.

This article originally appeared in Managing Intellectual Property, December 2015 / January 2016. Read the full article as PDF.

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Chicago, IL USA DATE- Daniel Gurfinkel, an attorney registered to practice before the US Patent and trademark office and a Principal in the Chicago office of the law firm of Dennemeyer & Associates, LLC, has been appointed as an adjunct professor in the faculty of the John Marshall Law School’s Center for Intellectual Property.

The John Marshall Law School is located in Chicago’s financial district. John Marshall’s Center for Intellectual Property has led the way since 1940 and is one of the nation’s leading IP programs.

“I look forward to joining the John Marshall patent clinic to help inventors who otherwise could not participate in this process bring their ideas to the patent office”, said Daniel Gurfinkel.

About Dennemeyer & Associates

Dennemeyer & Associates is a leading IP law firm with a genuine international span. We maintain six offices in five European countries (Luxembourg, Germany, Poland, Romania, Croatia) and five further offices in non-European countries (United States of America, United Arab Emirates, Japan, Australia, Brazil). Our international team of patent and trademark attorneys is admitted to practice before the Patent and Trademark Offices of several additional European and non-European jurisdictions (e.g. France, the Netherlands, Belgium, Great Britain, Switzerland, Austria, Italy, EU, EPO, and New Zealand).

As a well-reputed and reliable intellectual property partner for multinational corporations and small and medium sized companies across industries for more than 50 years, the jury has recognized our pan-European footprint and our ability to deliver accurate and top-tier legal services to our European and non-European clients.

Chicago, IL USA DATE- Daniel Gurfinkel, an attorney registered to practice before the US Patent and trademark office and a Principal in the Chicago office of the law firm of Dennemeyer & Associates, LLC, has been appointed as an adjunct professor in the faculty of the John Marshall Law School’s Center for Intellectual Property.

The John Marshall Law School is located in Chicago’s financial district. John Marshall’s Center for Intellectual Property has led the way since 1940 and is one of the nation’s leading IP programs.

“I look forward to joining the John Marshall patent clinic to help inventors who otherwise could not participate in this process bring their ideas to the patent office”, said Daniel Gurfinkel.

About Dennemeyer & Associates

Dennemeyer & Associates is a leading IP law firm with a genuine international span. We maintain six offices in five European countries (Luxembourg, Germany, Poland, Romania, Croatia) and five further offices in non-European countries (United States of America, United Arab Emirates, Japan, Australia, Brazil). Our international team of patent and trademark attorneys is admitted to practice before the Patent and Trademark Offices of several additional European and non-European jurisdictions (e.g. France, the Netherlands, Belgium, Great Britain, Switzerland, Austria, Italy, EU, EPO, and New Zealand).

As a well-reputed and reliable intellectual property partner for multinational corporations and small and medium sized companies across industries for more than 50 years, the jury has recognized our pan-European footprint and our ability to deliver accurate and top-tier legal services to our European and non-European clients.

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The proposed reformed rules for Community trademarks are currently under discussion by the European Parliament. Clémence Stahl of Dennemeyer reviews the likely changes and their implications for right owners.

The Community trademark (CTM) was created 15 years ago and has remained substantially unchanged. However, today’s economic environment has resulted in the need for reform, the aim of which is to harmonise the national specificities that remain between member states and to simplify components of the CTM system.

In a communication dated May 24, 2011, the European Commission concluded that “there is a necessity to modernise the trademark system in the EU”.

A draft text for the reform was prepared and in April 2015 the European Parliament, Commission and Council reached an agreement.

The changes are being reviewed by the parliament again, but substantial changes to the last version of the text are not likely. The reform is expected to come into force in the second quarter of 2016. All country members of the EU will then have three years to transpose the changes.

Trademark applicants and the attorneys representing them will have to get used to a new terminology. The Office for Harmonization in the Internal Market (OHIM) will now be called the European Union Intellectual Property Office (EUIPO) and the CTM will be called the European Union trademark (EUTM).

Simplified filing procedure

1. Modified fee structure per class

The applicants for trademarks in only one class will now pay less: €850 ($940) instead of €900. However, the costs will now be higher if a trademark applicant wants to protect its trademark in three classes: €1,050 instead of €900 for an EUTM filed electronically.

2. Disappearance of the graphical representation

Concerning the conditions of registrability of a trademark in the EU, the concept of graphical representation has been removed from the conditions of an EUTM. Only a “representation that enables the authorities and the public to determine clearly and precisely what is being protected” will be required.

This opens the doors to the protection of non-conventional trademarks, in particular sounds and smells.

3. Clarification of the requirements for the list of goods and services

One of the reform’s highlights is that the modifications regarding the goods and services classification in EUTM applications are now official. This follows the IP Translator decision of June 22, 2012 by the Court of Justice of the European Union (CJEU), which changed the interpretation of specifications of goods/services filed at OHIM.

In summary, the applicant in this case intended to register the trademark ‘IP Translator’ in the UK using simply the class heading of Nice class 41. In accordance with OHIM and other national offices, the UK Intellectual Property Office (IPO) held that listing the headings for a class amounted to claiming protection for the entire alphabetical list of goods and services in that class, even though not all of them were explicitly listed and some were not even covered by the literal meaning of the class headings.

Since, in accordance with this practice, the trademark application also covered “translation services”, although these were not explicitly mentioned in the specification or in the class headings, the mark was rejected by the IPO as being descriptive of that service.

Deviating from the previous jurisdiction, the CJEU decided in this case that goods or services for which protection is sought must be identified with sufficient clarity. It held that on this basis alone, one must be able to determine the extent of the protection conferred by a trademark.

Moreover, it established that some class headings can indeed properly be used to identify goods and services, as they themselves are sufficiently clear and precise. However, for other class headings, this is not applicable. When using class headings, the applicant can indicate that it wants the registration to cover all the goods and services included in the full alphabetical list if it wishes. If it does not wish to include all the goods and services, it is obliged to specify the particular goods and services it seeks protection for.

Essentially, any CTM filed with a class heading would see its meaning interpreted literally.

The major question was how to treat CTMs that had been filed before June 22, 2012, ie, prior to the IP Translator decision. In the scope of this reform, the decision was made that all trademark owners that filed a CTM application before June 22 will have six months following the entry into force of the new regulations to file a declaration at OHIM stating for which goods and services under the class heading they want to obtain protection.

Trademark owners must proceed with this modification and declaration as soon as possible. The additional protection potentially provided by the modification of the list of goods and services will not be retrospective. Owners that modify their list of goods and services in these conditions will not be able to prevent any third party from using a trademark in relation to goods and services where and to the extent that:

The use of the trademark for those goods and services commenced before the register was amended; and/or

The use of the trademark in relation to those goods and services did not infringe the proprietor’s rights based on the literal meaning of the goods and services in the register at that time.

Stronger enforcement of trademark rights

1. Administrative procedure for cancellation actions

For a French trademark attorney, the obligation on the countries to adopt administrative cancellation proceedings is new. At the moment, in France—unlike in Germany and the UK—there is no administrative proceeding to act against a trademark registration on the basis of its non-use. France, and other similar countries, will now have to adopt a new administrative proceeding. This new procedure must be implemented in the next seven years.

2. Enlargement of infringement cases

In the new regulation, it is foreseen that the infringement of a EUTM should also comprise “the use of the sign as a trade name or similar designation (trading or company name) as long as the use is made for the purpose of distinguishing goods or services”.

Furthermore, the use of a trademark by competitors in breach of the 2006/114/EC directive on comparative advertising will now be recognised as trademark infringement. Also, counterfeit goods-in-transit will now be considered as infringing the trademark of the owner.

This article originally appeared in WIPR, published in December 2015. Click here to read the full article.

The proposed reformed rules for Community trademarks are currently under discussion by the European Parliament. Clémence Stahl of Dennemeyer reviews the likely changes and their implications for right owners.

The Community trademark (CTM) was created 15 years ago and has remained substantially unchanged. However, today’s economic environment has resulted in the need for reform, the aim of which is to harmonise the national specificities that remain between member states and to simplify components of the CTM system.

In a communication dated May 24, 2011, the European Commission concluded that “there is a necessity to modernise the trademark system in the EU”.

A draft text for the reform was prepared and in April 2015 the European Parliament, Commission and Council reached an agreement.

The changes are being reviewed by the parliament again, but substantial changes to the last version of the text are not likely. The reform is expected to come into force in the second quarter of 2016. All country members of the EU will then have three years to transpose the changes.

Trademark applicants and the attorneys representing them will have to get used to a new terminology. The Office for Harmonization in the Internal Market (OHIM) will now be called the European Union Intellectual Property Office (EUIPO) and the CTM will be called the European Union trademark (EUTM).

Simplified filing procedure

1. Modified fee structure per class

The applicants for trademarks in only one class will now pay less: €850 ($940) instead of €900. However, the costs will now be higher if a trademark applicant wants to protect its trademark in three classes: €1,050 instead of €900 for an EUTM filed electronically.

2. Disappearance of the graphical representation

Concerning the conditions of registrability of a trademark in the EU, the concept of graphical representation has been removed from the conditions of an EUTM. Only a “representation that enables the authorities and the public to determine clearly and precisely what is being protected” will be required.

This opens the doors to the protection of non-conventional trademarks, in particular sounds and smells.

3. Clarification of the requirements for the list of goods and services

One of the reform’s highlights is that the modifications regarding the goods and services classification in EUTM applications are now official. This follows the IP Translator decision of June 22, 2012 by the Court of Justice of the European Union (CJEU), which changed the interpretation of specifications of goods/services filed at OHIM.

In summary, the applicant in this case intended to register the trademark ‘IP Translator’ in the UK using simply the class heading of Nice class 41. In accordance with OHIM and other national offices, the UK Intellectual Property Office (IPO) held that listing the headings for a class amounted to claiming protection for the entire alphabetical list of goods and services in that class, even though not all of them were explicitly listed and some were not even covered by the literal meaning of the class headings.

Since, in accordance with this practice, the trademark application also covered “translation services”, although these were not explicitly mentioned in the specification or in the class headings, the mark was rejected by the IPO as being descriptive of that service.

Deviating from the previous jurisdiction, the CJEU decided in this case that goods or services for which protection is sought must be identified with sufficient clarity. It held that on this basis alone, one must be able to determine the extent of the protection conferred by a trademark.

Moreover, it established that some class headings can indeed properly be used to identify goods and services, as they themselves are sufficiently clear and precise. However, for other class headings, this is not applicable. When using class headings, the applicant can indicate that it wants the registration to cover all the goods and services included in the full alphabetical list if it wishes. If it does not wish to include all the goods and services, it is obliged to specify the particular goods and services it seeks protection for.

Essentially, any CTM filed with a class heading would see its meaning interpreted literally.

The major question was how to treat CTMs that had been filed before June 22, 2012, ie, prior to the IP Translator decision. In the scope of this reform, the decision was made that all trademark owners that filed a CTM application before June 22 will have six months following the entry into force of the new regulations to file a declaration at OHIM stating for which goods and services under the class heading they want to obtain protection.

Trademark owners must proceed with this modification and declaration as soon as possible. The additional protection potentially provided by the modification of the list of goods and services will not be retrospective. Owners that modify their list of goods and services in these conditions will not be able to prevent any third party from using a trademark in relation to goods and services where and to the extent that:

The use of the trademark for those goods and services commenced before the register was amended; and/or

The use of the trademark in relation to those goods and services did not infringe the proprietor’s rights based on the literal meaning of the goods and services in the register at that time.

Stronger enforcement of trademark rights

1. Administrative procedure for cancellation actions

For a French trademark attorney, the obligation on the countries to adopt administrative cancellation proceedings is new. At the moment, in France—unlike in Germany and the UK—there is no administrative proceeding to act against a trademark registration on the basis of its non-use. France, and other similar countries, will now have to adopt a new administrative proceeding. This new procedure must be implemented in the next seven years.

2. Enlargement of infringement cases

In the new regulation, it is foreseen that the infringement of a EUTM should also comprise “the use of the sign as a trade name or similar designation (trading or company name) as long as the use is made for the purpose of distinguishing goods or services”.

Furthermore, the use of a trademark by competitors in breach of the 2006/114/EC directive on comparative advertising will now be recognised as trademark infringement. Also, counterfeit goods-in-transit will now be considered as infringing the trademark of the owner.

This article originally appeared in WIPR, published in December 2015. Click here to read the full article.

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We wish to inform you that recently we saw a sharp increase of fraudulent messages posing as coming from Dennemeyer, requesting information or wire transfer of certain amounts to third-party bank accounts.

While the message, sender and e-mail signature may look identical to legitimate communication you received previously from us, the actual reply-to address does not belong to the sender. Additionally, there might be spelling mistakes in addresses (such as denemeyer or dennemeyerr).

Unfortunately this is not an isolated issue in corporate communications, however it is the first time we have been affected by it. More information about such scams, and ways to counteract them can be found under:

As far as our communications are concerned, we ask you to call your Dennemeyer contact immediately in case of any suspicion. Please do not reply to any illegitimate questionable e-mail as this will directly aid the cybercriminals’ activity.

We are doing everything we can to stop these fraudulent e-mails, however there is no technical way to overcome this issue. We trust your vigilance.

E-mail fraud is a serious issue that affects a large number of corporations. In order to avoid being a target of cybercrime, please take all the necessary actions to secure your IT infrastructure.

We wish to inform you that recently we saw a sharp increase of fraudulent messages posing as coming from Dennemeyer, requesting information or wire transfer of certain amounts to third-party bank accounts.

While the message, sender and e-mail signature may look identical to legitimate communication you received previously from us, the actual reply-to address does not belong to the sender. Additionally, there might be spelling mistakes in addresses (such as denemeyer or dennemeyerr).

Unfortunately this is not an isolated issue in corporate communications, however it is the first time we have been affected by it. More information about such scams, and ways to counteract them can be found under:

As far as our communications are concerned, we ask you to call your Dennemeyer contact immediately in case of any suspicion. Please do not reply to any illegitimate questionable e-mail as this will directly aid the cybercriminals’ activity.

We are doing everything we can to stop these fraudulent e-mails, however there is no technical way to overcome this issue. We trust your vigilance.

E-mail fraud is a serious issue that affects a large number of corporations. In order to avoid being a target of cybercrime, please take all the necessary actions to secure your IT infrastructure.

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This year's at Dennemeyer Annual Meeting in Munich.

This year's at Dennemeyer Annual Meeting in Munich.

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Charlie is surprised by the call from his procurement department asking about the trademark renewal service. He has been working with the same service provider for years and he is happy with their performance. Trademarks are renewed like clockwork and he’s paying a fair amount, or at least that’s what he thinks.

Procurement suspects that Charlie is missing something. They are right.

The service fee is reasonable; however, Charlie’s unaware of the 20% foreign currency markup and that the agent fees are not competitive.  Plus, Charlie is paying for an unneeded level of renewal service.  Charlie feels, well, embarrassed.

To ensure you will not end up like Charlie, Dennemeyer is hosting a webinar, the Secret World of Trademark Renewals, on December 16, 2015 at 1PM CST.

This webinar dives into the cost components of a trademark renewal and breaks down actual renewal invoices to reveal what companies are actually paying. After this webinar, you will be poised to evaluate your trademark renewal costs.

For a webinar taste, here are the 7 Main Cost Categories of a Trademark Renewal:

1. Official Fee

The Official Fee is charged by each Patent and Trademark Office to renew the trademark and does not vary by provider.

2. Agent Fee

The Agent Fee is highly variable for two reasons.  First, each provider has a set of jurisdictions that they pay directly, thus eliminating agent fees for that jurisdiction. Second, even if two providers both pay through an agent in a jurisdiction, the fee can vary significantly.

As the second largest global renewal provider, Dennemeyer’s established and annually reviewed agent network provides some of the best industry rates. Through our invoice analysis, we’ve discovered difference of over $200 per mark in jurisdictions between our lower agent fee and the other provider’s.

3. Service Fee

The Service Fee is the stated fee the renewal provider charges for conducting the service. This fee varies based on the nature of the renewal service and varies by portfolio size. Typically, people focus on the service fee. Interestingly, other charges can have a larger impact on the renewal cost.

Dennemeyer provides tiered service options that you can choose from regardless of portfolio size. Your choice to match your needs. Our standard service is just $39 per mark - for everyone.

4. Foreign exchange fees

Many renewal providers mark up their exchange rates above the prevailing interbank exchange rate. These can vary wildly from one renewal provider to the next. Typically, this markup is to cover currency acquisition costs. However, some providers pad this percentage to increase profit margins.

5. Legalization and Notarization Costs

Various countries require notarization and legalization of renewal documents.  This can be expensive and fluctuates by provider.

Want to know more? Be prepared to ring out maximum value in 2016 and register today for the Secret World of Trademark Renewals, on December 16, 2015 at 1PM CST. Seats are limited.

This example is hypothetical and is used for marketing purposes.  Any similarity to an actual situation is unintended. Not all trademark renewal providers charge foreign currency markups.

Charlie is surprised by the call from his procurement department asking about the trademark renewal service. He has been working with the same service provider for years and he is happy with their performance. Trademarks are renewed like clockwork and he’s paying a fair amount, or at least that’s what he thinks.

Procurement suspects that Charlie is missing something. They are right.

The service fee is reasonable; however, Charlie’s unaware of the 20% foreign currency markup and that the agent fees are not competitive.  Plus, Charlie is paying for an unneeded level of renewal service.  Charlie feels, well, embarrassed.

To ensure you will not end up like Charlie, Dennemeyer is hosting a webinar, the Secret World of Trademark Renewals, on December 16, 2015 at 1PM CST.

This webinar dives into the cost components of a trademark renewal and breaks down actual renewal invoices to reveal what companies are actually paying. After this webinar, you will be poised to evaluate your trademark renewal costs.

For a webinar taste, here are the 7 Main Cost Categories of a Trademark Renewal:

1. Official Fee

The Official Fee is charged by each Patent and Trademark Office to renew the trademark and does not vary by provider.

2. Agent Fee

The Agent Fee is highly variable for two reasons.  First, each provider has a set of jurisdictions that they pay directly, thus eliminating agent fees for that jurisdiction. Second, even if two providers both pay through an agent in a jurisdiction, the fee can vary significantly.

As the second largest global renewal provider, Dennemeyer’s established and annually reviewed agent network provides some of the best industry rates. Through our invoice analysis, we’ve discovered difference of over $200 per mark in jurisdictions between our lower agent fee and the other provider’s.

3. Service Fee

The Service Fee is the stated fee the renewal provider charges for conducting the service. This fee varies based on the nature of the renewal service and varies by portfolio size. Typically, people focus on the service fee. Interestingly, other charges can have a larger impact on the renewal cost.

Dennemeyer provides tiered service options that you can choose from regardless of portfolio size. Your choice to match your needs. Our standard service is just $39 per mark - for everyone.

4. Foreign exchange fees

Many renewal providers mark up their exchange rates above the prevailing interbank exchange rate. These can vary wildly from one renewal provider to the next. Typically, this markup is to cover currency acquisition costs. However, some providers pad this percentage to increase profit margins.

5. Legalization and Notarization Costs

Various countries require notarization and legalization of renewal documents.  This can be expensive and fluctuates by provider.

Want to know more? Be prepared to ring out maximum value in 2016 and register today for the Secret World of Trademark Renewals, on December 16, 2015 at 1PM CST. Seats are limited.

This example is hypothetical and is used for marketing purposes.  Any similarity to an actual situation is unintended. Not all trademark renewal providers charge foreign currency markups.

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In June, the Supreme Court overturned a decision by the IPHC in regards to the interpretation of the Product-by-Process claims. Today, Kazuya Sekiguchi of Dennemyer & Associates, gives insight to the case and explains what this means for the future.

On 5 June 2015, the Supreme Court overturned the decision by the Grand Panel of the Intellectual Property High Court (IPHC) with respect to the interpretation of the Product-by-Process (PBP) claims. According to the decision, PBP claims can be used only when it is impossible or unrealistic to define the product itself without using the process to obtain it at the time of application. In this case, the scope of the claims should be interpreted to include products produced, not only by the process recited in the PBP claims, but also products obtained by any other process.

PBP Claim History

Interpretation of PBP claims

A PBP claim is a claim which includes a statement defining a product by its manufacturing process, such as “Product A which is obtained by a process X”. In Japanese practice, the applicant can choose to use PBP claims when he believes it is inappropriate to define the product without using the process, even when the product can be defined without doing so.

When interpreting the scope of the PBP claims, there have been two types of interpretation. One is that the scope of a PBP claim (Product A which is obtained by a process X) covers any products irrelevant to the process to obtain it; this is called Product-based-interpretation. The other one is that a PBP claim covers only the product A which is produced by exactly the recited process X; this is called Process-based-interpretation.

At the examination stage, the PBP claims are interpreted based on Product-based-interpretation. That is, if the product (A) itself is not novel, the claimed product (A) is not patentable even if the process defined in PBP claims it is new and inventive.

On the other hand, when judging the infringement of the PBP claims, there are case laws that adopt both Product-based-interpretation and Process-based-interpretation to define the scope of the PBP claims. In order to unify the interpretation of the PBP claims, the Grand Panel of the IPHC issued an important decision in January, 2012.

Grand Panel of the IPHC Decision

Case Outline

 

  • Plaintiff; TEVA Gyogyszergyar (hereinafter “TEVA”)
  • The defendant; Kyowa Hakko Kirin (hereinafter “Kyowa”)
  • Patent No. JP 3737801 B (TEVA’s patent)
  • Title: “Pravastatin sodium substantially free of pravastatin lactone and epi-pravastatin, and compositions containing same”
  • Claim 1: “Pravastatin sodium containing less than 0.5 wt.% of pravastatin lactone and less than 0.2 wt.%of epiprava, wherein the pravastatin sodium is obtained by the following steps:

 

 

  1. Preparing a concentrated organic solution of pravastatin,
  2. Precipitating the pravastatin as its ammonium salt,
  3. Purifying the pravastatin by recrystallization of the ammonium salt,
  4. Transposing the ammonium salt to pravastatin sodium salt, and
  5. Isolating pravastatin sodium.”

 

Kyowa manufactures and distributes “Pravastatin sodium containing less than 0.2 wt.% of paravastatin lactone and less than 0.1 wt.% of epiprava”. TEVA filed a suit against Kyowa at the Tokyo District Court (2007(Wa)35324), requesting injunction of the manufacturing and distributing of Kyowa’s product. Kyowa replied that its product is not manufactured by the same process as claimed in TEVA’s patent (Kyowa’s process does not include the step A of the TEVA’s patent).

The Decision

In the decision, the Grand Panel of the IPHC ruled the criterion how to interpret PBP claims as follows:

“The scope of PBP claims, in principle, should be interpreted by using the entire wording in the claims, and thus it should be limited to the product obtained by the recited process X.

However, for some new products, it might be difficult or impossible to define the product itself without using the process to obtain the product at the time of application. Only in such cases, the scope of the PBP claim may be interpreted to include the product independently of the process to obtain it.”

The patentee must prove the fact that it was difficult or impossible to define the claimed product (A) without using the process (X) to obtain it at the time of application if he wants broader protection (without the limitation of the process to obtain the claimed product).

The Grand Panel also ruled that this criterion should also be applied to the examination procedure.

Based on this criterion, the Grand Panel concluded that the TEVA did not prove that it was difficult or impossible to define the claimed product (A) without using the process (X) at the time of the application. Therefore, the scope of TEVA’s patent should be interpreted based on “Process-based-interpretation”.

Since the Kyowa’s process to obtain the product does not include step a) of TEVA’s patent claim, listed above, the Grand Panel ruled that Kyowa’s product is not within the scope of the TEVA’s patent and thus no infringement in this case.

In summary, the Grand Panel of the IPHC ruled that the scope of the PBP claims is limited to the product obtained by the claimed process in principle. Exceptionally, the scope can be broadened to the claimed product, irrelevant to the process to obtain it, when it is difficult or impossible to define the claimed product without using the process at the time of the application.

Supreme Court Decision

The Supreme Court overturned the decision by the Grand Panel of the IPHC and decided to send back this case to the IPHC.

In the decision, the Supreme Court states:

“A patent may be granted to the invention of a product, a process and a process to produce a product. The scope of the patent of a product claim should cover all the products which have the same structure, physical properties, etc. as those of the claimed product. PBP claim defines an invention of a product itself, though the product is defined by a process to obtain it. Therefore, the scope of the PBP claims should be interpreted in the same way as for the other claims relating to a product, namely to cover products which have same structure, physical properties, etc. as those of the claimed product, irrelevant to the process to obtain it.”

That is, the Supreme Court clearly showed a criterion that the scope of the PBP claims should always be interpreted based on the “Product-based-interpretation”.

On the other hand, it is necessary that the structure, physical properties, etc. of the claimed product should be clearly read from the claims. Otherwise, a third party cannot properly judge the scope of the claimed invention and thus they may suffer unpredictable prejudice. If it is difficult or impossible for the skilled person to understand the scope of the claimed product, such a claim should be regarded as unclear. In this regard, when a product is defined by the process to obtain it, it is usually difficult for the skilled person to understand what structure, physical properties, etc. the claimed product has.

Consequently, the Supreme Court ruled:

“A claim defined by the process to obtain it (a PBP claim) is in principle unclear because it is usually difficult for the skilled person to understand what structure, physical properties, etc. the claimed product has. Therefore, PBP claims will be rejected since they are not clear. However, there is a case where it is impossible or unrealistic to define the product itself without using the process to obtain it at the time of application. In such a case, defining the product by the process to obtain it should be admitted, i.e. the requirements of clarity should be regarded as met.”

Given the sentences of the Supreme Court, the decision of the IPHC Grand Panel is not appropriate as it mentions that the PBP claims can be interpreted by “Process-based-interpretation” under certain circumstances. Therefore, the case has been sentenced to be sent back to the IPHC for further examination. Based on the Supreme Court decision, it will be re-examined whether the product manufactured by Kyowa has the same structure, physical properties, etc. as those of TEVA’s patent in the IPHC. If it is concluded that the product produced by Kyowa is the same as the TEVA’s claimed product, the IPHC will conclude that Kyowa infringes TEVA’s patent.

On the other hand, the clarity of TEVA’s patent will be an issue. In the previous IPHC’s decision, the Grand Panel stated that it cannot be said that it was impossible or unrealistic to define the product itself without using the process to obtain it, at the time of application. Therefore, if TEVA cannot prove that it was impossible or unrealistic to define the product without using the process to obtain it at the time of application, this patent may be revoked due to lack of clarity.

Conclusion

Following this Supreme Court decision, the Japan Patent Office (JPO) has started to revise the Guidelines for the patent and utility model examination. In order for the PBP claims to be kept in the examination procedure, the JPO examiner will, in principle, raise an objection for clarity and the applicant will need to prove that it was impossible or unrealistic to define the product itself without using the process to obtain it at the time of application.

The JPO announced that the Examination under the new Guideline starts from October 2015. Until then, the examiner will issue an office action for all the applications, including PBP claims, in order for the applicant to have an opportunity to amend claims or to argue the validity of using PBP claims.

Due to the Supreme Court decision, using PBP claims will be more difficult in the future. Now, in order for the PBP claims to be maintained, it is necessary for the applicant to prove that it was impossible or unrealistic to define the product itself without using the process to obtain it at the time of application.

This article originally appeared in Patent Lawyer Magazine, published in November 2015. Click here to read the full article.

In June, the Supreme Court overturned a decision by the IPHC in regards to the interpretation of the Product-by-Process claims. Today, Kazuya Sekiguchi of Dennemyer & Associates, gives insight to the case and explains what this means for the future.

On 5 June 2015, the Supreme Court overturned the decision by the Grand Panel of the Intellectual Property High Court (IPHC) with respect to the interpretation of the Product-by-Process (PBP) claims. According to the decision, PBP claims can be used only when it is impossible or unrealistic to define the product itself without using the process to obtain it at the time of application. In this case, the scope of the claims should be interpreted to include products produced, not only by the process recited in the PBP claims, but also products obtained by any other process.

PBP Claim History

Interpretation of PBP claims

A PBP claim is a claim which includes a statement defining a product by its manufacturing process, such as “Product A which is obtained by a process X”. In Japanese practice, the applicant can choose to use PBP claims when he believes it is inappropriate to define the product without using the process, even when the product can be defined without doing so.

When interpreting the scope of the PBP claims, there have been two types of interpretation. One is that the scope of a PBP claim (Product A which is obtained by a process X) covers any products irrelevant to the process to obtain it; this is called Product-based-interpretation. The other one is that a PBP claim covers only the product A which is produced by exactly the recited process X; this is called Process-based-interpretation.

At the examination stage, the PBP claims are interpreted based on Product-based-interpretation. That is, if the product (A) itself is not novel, the claimed product (A) is not patentable even if the process defined in PBP claims it is new and inventive.

On the other hand, when judging the infringement of the PBP claims, there are case laws that adopt both Product-based-interpretation and Process-based-interpretation to define the scope of the PBP claims. In order to unify the interpretation of the PBP claims, the Grand Panel of the IPHC issued an important decision in January, 2012.

Grand Panel of the IPHC Decision

Case Outline

 

  • Plaintiff; TEVA Gyogyszergyar (hereinafter “TEVA”)
  • The defendant; Kyowa Hakko Kirin (hereinafter “Kyowa”)
  • Patent No. JP 3737801 B (TEVA’s patent)
  • Title: “Pravastatin sodium substantially free of pravastatin lactone and epi-pravastatin, and compositions containing same”
  • Claim 1: “Pravastatin sodium containing less than 0.5 wt.% of pravastatin lactone and less than 0.2 wt.%of epiprava, wherein the pravastatin sodium is obtained by the following steps:

 

 

  1. Preparing a concentrated organic solution of pravastatin,
  2. Precipitating the pravastatin as its ammonium salt,
  3. Purifying the pravastatin by recrystallization of the ammonium salt,
  4. Transposing the ammonium salt to pravastatin sodium salt, and
  5. Isolating pravastatin sodium.”

 

Kyowa manufactures and distributes “Pravastatin sodium containing less than 0.2 wt.% of paravastatin lactone and less than 0.1 wt.% of epiprava”. TEVA filed a suit against Kyowa at the Tokyo District Court (2007(Wa)35324), requesting injunction of the manufacturing and distributing of Kyowa’s product. Kyowa replied that its product is not manufactured by the same process as claimed in TEVA’s patent (Kyowa’s process does not include the step A of the TEVA’s patent).

The Decision

In the decision, the Grand Panel of the IPHC ruled the criterion how to interpret PBP claims as follows:

“The scope of PBP claims, in principle, should be interpreted by using the entire wording in the claims, and thus it should be limited to the product obtained by the recited process X.

However, for some new products, it might be difficult or impossible to define the product itself without using the process to obtain the product at the time of application. Only in such cases, the scope of the PBP claim may be interpreted to include the product independently of the process to obtain it.”

The patentee must prove the fact that it was difficult or impossible to define the claimed product (A) without using the process (X) to obtain it at the time of application if he wants broader protection (without the limitation of the process to obtain the claimed product).

The Grand Panel also ruled that this criterion should also be applied to the examination procedure.

Based on this criterion, the Grand Panel concluded that the TEVA did not prove that it was difficult or impossible to define the claimed product (A) without using the process (X) at the time of the application. Therefore, the scope of TEVA’s patent should be interpreted based on “Process-based-interpretation”.

Since the Kyowa’s process to obtain the product does not include step a) of TEVA’s patent claim, listed above, the Grand Panel ruled that Kyowa’s product is not within the scope of the TEVA’s patent and thus no infringement in this case.

In summary, the Grand Panel of the IPHC ruled that the scope of the PBP claims is limited to the product obtained by the claimed process in principle. Exceptionally, the scope can be broadened to the claimed product, irrelevant to the process to obtain it, when it is difficult or impossible to define the claimed product without using the process at the time of the application.

Supreme Court Decision

The Supreme Court overturned the decision by the Grand Panel of the IPHC and decided to send back this case to the IPHC.

In the decision, the Supreme Court states:

“A patent may be granted to the invention of a product, a process and a process to produce a product. The scope of the patent of a product claim should cover all the products which have the same structure, physical properties, etc. as those of the claimed product. PBP claim defines an invention of a product itself, though the product is defined by a process to obtain it. Therefore, the scope of the PBP claims should be interpreted in the same way as for the other claims relating to a product, namely to cover products which have same structure, physical properties, etc. as those of the claimed product, irrelevant to the process to obtain it.”

That is, the Supreme Court clearly showed a criterion that the scope of the PBP claims should always be interpreted based on the “Product-based-interpretation”.

On the other hand, it is necessary that the structure, physical properties, etc. of the claimed product should be clearly read from the claims. Otherwise, a third party cannot properly judge the scope of the claimed invention and thus they may suffer unpredictable prejudice. If it is difficult or impossible for the skilled person to understand the scope of the claimed product, such a claim should be regarded as unclear. In this regard, when a product is defined by the process to obtain it, it is usually difficult for the skilled person to understand what structure, physical properties, etc. the claimed product has.

Consequently, the Supreme Court ruled:

“A claim defined by the process to obtain it (a PBP claim) is in principle unclear because it is usually difficult for the skilled person to understand what structure, physical properties, etc. the claimed product has. Therefore, PBP claims will be rejected since they are not clear. However, there is a case where it is impossible or unrealistic to define the product itself without using the process to obtain it at the time of application. In such a case, defining the product by the process to obtain it should be admitted, i.e. the requirements of clarity should be regarded as met.”

Given the sentences of the Supreme Court, the decision of the IPHC Grand Panel is not appropriate as it mentions that the PBP claims can be interpreted by “Process-based-interpretation” under certain circumstances. Therefore, the case has been sentenced to be sent back to the IPHC for further examination. Based on the Supreme Court decision, it will be re-examined whether the product manufactured by Kyowa has the same structure, physical properties, etc. as those of TEVA’s patent in the IPHC. If it is concluded that the product produced by Kyowa is the same as the TEVA’s claimed product, the IPHC will conclude that Kyowa infringes TEVA’s patent.

On the other hand, the clarity of TEVA’s patent will be an issue. In the previous IPHC’s decision, the Grand Panel stated that it cannot be said that it was impossible or unrealistic to define the product itself without using the process to obtain it, at the time of application. Therefore, if TEVA cannot prove that it was impossible or unrealistic to define the product without using the process to obtain it at the time of application, this patent may be revoked due to lack of clarity.

Conclusion

Following this Supreme Court decision, the Japan Patent Office (JPO) has started to revise the Guidelines for the patent and utility model examination. In order for the PBP claims to be kept in the examination procedure, the JPO examiner will, in principle, raise an objection for clarity and the applicant will need to prove that it was impossible or unrealistic to define the product itself without using the process to obtain it at the time of application.

The JPO announced that the Examination under the new Guideline starts from October 2015. Until then, the examiner will issue an office action for all the applications, including PBP claims, in order for the applicant to have an opportunity to amend claims or to argue the validity of using PBP claims.

Due to the Supreme Court decision, using PBP claims will be more difficult in the future. Now, in order for the PBP claims to be maintained, it is necessary for the applicant to prove that it was impossible or unrealistic to define the product itself without using the process to obtain it at the time of application.

This article originally appeared in Patent Lawyer Magazine, published in November 2015. Click here to read the full article.

Read more

Transparency. Clarity. Two words that are rarely used within patent annuity industry.

What are you being charged and why?

Dennemeyer’s mission is to bring cost transparency to the patent annuity industry. To answer the above question, Dennemeyer is hosting a complimentary webinar on November 19, 2015 at 1:00pm (U.S. Central Standard Time) on the Secret World of Patent Annuities.

Cost transparency: what is it good for?

Of course, this question is rather facetious. We know that cost transparency is important. Low service fees rarely translate into lower patent annuity costs. Other fees and opaque charges obscure the picture. Uncovering the actual costs of patent maintenance is increasingly important as budgets get squeezed and accountability is stressed.

A lack of clarity can lead to misunderstandings, which in turn lead to the courts.

In some cases entities are paying annuity related fees that are 200 to 500% of what they think they are paying. This webinar will address the issues associated with industry transparency, although it will not discuss any particular litigation.

Analyze. Discover. Take Action

This need for clarity is the driving force behind the webinar, “Secret World of Patents: An exposé of the opaque world of annuity economics”.  The complimentary webinar will be held on November 19, 2015, at 1:00 pm CST. Join us to peel back the curtain and learn how to analyze annuity payments accurately to ensure you get the best value.

Once you understand how annuity services are priced, you can understand the value you receive from your patent annuity service provider. Then, you have the knowledge to move forward and take appropriate action.

The webinar will support you as you create an accurate cost-benefit portfolio analysis for future growth. Learn more about the webinar and register today; space is limited.

Transparency. Clarity. Two words that are rarely used within patent annuity industry.

What are you being charged and why?

Dennemeyer’s mission is to bring cost transparency to the patent annuity industry. To answer the above question, Dennemeyer is hosting a complimentary webinar on November 19, 2015 at 1:00pm (U.S. Central Standard Time) on the Secret World of Patent Annuities.

Cost transparency: what is it good for?

Of course, this question is rather facetious. We know that cost transparency is important. Low service fees rarely translate into lower patent annuity costs. Other fees and opaque charges obscure the picture. Uncovering the actual costs of patent maintenance is increasingly important as budgets get squeezed and accountability is stressed.

A lack of clarity can lead to misunderstandings, which in turn lead to the courts.

In some cases entities are paying annuity related fees that are 200 to 500% of what they think they are paying. This webinar will address the issues associated with industry transparency, although it will not discuss any particular litigation.

Analyze. Discover. Take Action

This need for clarity is the driving force behind the webinar, “Secret World of Patents: An exposé of the opaque world of annuity economics”.  The complimentary webinar will be held on November 19, 2015, at 1:00 pm CST. Join us to peel back the curtain and learn how to analyze annuity payments accurately to ensure you get the best value.

Once you understand how annuity services are priced, you can understand the value you receive from your patent annuity service provider. Then, you have the knowledge to move forward and take appropriate action.

The webinar will support you as you create an accurate cost-benefit portfolio analysis for future growth. Learn more about the webinar and register today; space is limited.

Read more

Pharmaceutical trademark owners in Australia should carefully select and register their marks to minimise potential problems associated with including INNs or INN stems, as Geordie Oldfield of Dennemeyer explains.

In Australia, the selection and registration of pharmaceutical trademarks requires special attention. Examiners are much more likely to object to a trademark based on likelihood of causing deception or confusion if the application covers pharmaceuticals or related products. Furthermore, the increasingly crowded state of the trademark register mandates careful management. Nevertheless, consideration of the manner in which pharmaceuticals are distributed and sold can assist pharma trademark applicants in paving a path to registration and use in Australia.

When selecting a pharma trademark for registration in Australia, it is crucial to consider whether the mark is, or contains, an international nonproprietary name (INN), or an INN stem. Managed by the World Health Organisation (WHO), the INN programme aims to identify pharma substances by unique, universally recognisable names. An INN is in effect the generic name for a substance. Paracetamol is an example of an INN. A number of INN databases are available online; one example is the Australian Trade Marks Office’s (ATMO) online search facility for INNs.

The INN programme also guides the use of word stems which are given to pharmacologically related substances. The suffix ‘-astine’ for antihistaminics is an example of an INN stem. The ATMO’s manual for examiners includes a list of INN stems. However, the WHO’s publication called “The use of stems in the selection of INNs for pharmaceutical substances”, available on its website, is a more comprehensive source of INN stem information.

The ATMO routinely objects to applications to register marks for pharmaceuticals or veterinary substances where the mark is, or contains, an INN or an INN stem. The office may object to an INN or INN stem on the basis that:

Because of a connotation of the INN or INN stem, the use of the trademark in relation to the goods would be likely to deceive or cause confusion (under section 43 of the Trade Marks Act 1995); and/or

If the mark in its entirety is identical or confusingly similar to an INN or identical to an INN stem, the mark is not capable of distinguishing the applicant’s goods from those of other persons (under section 41 of the act).

In 2012, the ATMO adopted the practice of raising an INN stem section 43 objection when all of the following criteria apply:

  • Goods covered by the application include pharmaceutical, veterinary or related class 5 products;
  • The trademark consists of, or includes, an INN stem;
  • The goods cited in the application are not restricted to the substance indicated by the INN programme definition; and
  • In circumstances where a trademark contains one or more elements in addition to the INN stem, the stem is ‘meaningful’ enough to give rise to a section 43 objection.

Concerning the last criterion, the office originally considered a stem not meaningful enough only if it formed part of an ordinary English word. For example, the stem ‘-quin(e)’ within the mark ‘Happy Equine’ would have been considered not meaningful enough to give rise to an objection.

Following some disquiet in the attorney profession and formal hearings to consider some applications with section 43 INN stem objections, the office changed its INN stem examination policy. It now considers whether the following factors are present when assessing whether a stem is ‘meaningful’ enough:

  • The stem is much shorter than the entire mark;
  • The presence of the stem is clearly overwhelmed by the meaning of the trademark as a whole;
  • The suffix is in common use other than in its INN-stem connotation, as shown by both the state of the register and the marketplace;
  • The INN stem is two or three letters long;
  • There are other or alternative obvious suffixes present in the trademark; and
  • The INN stem is non-specific.

The examiner’s manual suggests that either the first or second factor may in itself render the stem not meaningful (part 29, section 4.3.3). A 2012 ATMO hearing decision involving Boehringer Ingelheim suggests that where most of the third to sixth factors are present, a section 43 objection should not apply. In that case, Boehringer overcame a section 43 objection to the stem ‘-ol’ in Zelcivol.

The process adopted by the office is relatively formulaic and therefore straightforward for examiners to execute. It is worth noting, however, that an Australian court has yet to consider circumstances in which an INN stem renders a pharma trademark likely to deceive or cause confusion. A court might well pay more attention to the primary legislative requirements than to the office’s formulaic approach.

After identifying an INN stem in a proposed trademark, it is also important to carefully review the WHO INN publication itself. Information in the publication will sometimes assist in formulating arguments against a section 43 objection. For example, in respect of some stems, the publication:

  • Lists names in which the stem has been used but not in accordance with its definition; and/or
  • Includes a note that the stem is no longer formally acknowledged by the INN programme.

This article originally appeared in LSIPR published in October 2015. Click here to read the full article.

Pharmaceutical trademark owners in Australia should carefully select and register their marks to minimise potential problems associated with including INNs or INN stems, as Geordie Oldfield of Dennemeyer explains.

In Australia, the selection and registration of pharmaceutical trademarks requires special attention. Examiners are much more likely to object to a trademark based on likelihood of causing deception or confusion if the application covers pharmaceuticals or related products. Furthermore, the increasingly crowded state of the trademark register mandates careful management. Nevertheless, consideration of the manner in which pharmaceuticals are distributed and sold can assist pharma trademark applicants in paving a path to registration and use in Australia.

When selecting a pharma trademark for registration in Australia, it is crucial to consider whether the mark is, or contains, an international nonproprietary name (INN), or an INN stem. Managed by the World Health Organisation (WHO), the INN programme aims to identify pharma substances by unique, universally recognisable names. An INN is in effect the generic name for a substance. Paracetamol is an example of an INN. A number of INN databases are available online; one example is the Australian Trade Marks Office’s (ATMO) online search facility for INNs.

The INN programme also guides the use of word stems which are given to pharmacologically related substances. The suffix ‘-astine’ for antihistaminics is an example of an INN stem. The ATMO’s manual for examiners includes a list of INN stems. However, the WHO’s publication called “The use of stems in the selection of INNs for pharmaceutical substances”, available on its website, is a more comprehensive source of INN stem information.

The ATMO routinely objects to applications to register marks for pharmaceuticals or veterinary substances where the mark is, or contains, an INN or an INN stem. The office may object to an INN or INN stem on the basis that:

Because of a connotation of the INN or INN stem, the use of the trademark in relation to the goods would be likely to deceive or cause confusion (under section 43 of the Trade Marks Act 1995); and/or

If the mark in its entirety is identical or confusingly similar to an INN or identical to an INN stem, the mark is not capable of distinguishing the applicant’s goods from those of other persons (under section 41 of the act).

In 2012, the ATMO adopted the practice of raising an INN stem section 43 objection when all of the following criteria apply:

  • Goods covered by the application include pharmaceutical, veterinary or related class 5 products;
  • The trademark consists of, or includes, an INN stem;
  • The goods cited in the application are not restricted to the substance indicated by the INN programme definition; and
  • In circumstances where a trademark contains one or more elements in addition to the INN stem, the stem is ‘meaningful’ enough to give rise to a section 43 objection.

Concerning the last criterion, the office originally considered a stem not meaningful enough only if it formed part of an ordinary English word. For example, the stem ‘-quin(e)’ within the mark ‘Happy Equine’ would have been considered not meaningful enough to give rise to an objection.

Following some disquiet in the attorney profession and formal hearings to consider some applications with section 43 INN stem objections, the office changed its INN stem examination policy. It now considers whether the following factors are present when assessing whether a stem is ‘meaningful’ enough:

  • The stem is much shorter than the entire mark;
  • The presence of the stem is clearly overwhelmed by the meaning of the trademark as a whole;
  • The suffix is in common use other than in its INN-stem connotation, as shown by both the state of the register and the marketplace;
  • The INN stem is two or three letters long;
  • There are other or alternative obvious suffixes present in the trademark; and
  • The INN stem is non-specific.

The examiner’s manual suggests that either the first or second factor may in itself render the stem not meaningful (part 29, section 4.3.3). A 2012 ATMO hearing decision involving Boehringer Ingelheim suggests that where most of the third to sixth factors are present, a section 43 objection should not apply. In that case, Boehringer overcame a section 43 objection to the stem ‘-ol’ in Zelcivol.

The process adopted by the office is relatively formulaic and therefore straightforward for examiners to execute. It is worth noting, however, that an Australian court has yet to consider circumstances in which an INN stem renders a pharma trademark likely to deceive or cause confusion. A court might well pay more attention to the primary legislative requirements than to the office’s formulaic approach.

After identifying an INN stem in a proposed trademark, it is also important to carefully review the WHO INN publication itself. Information in the publication will sometimes assist in formulating arguments against a section 43 objection. For example, in respect of some stems, the publication:

  • Lists names in which the stem has been used but not in accordance with its definition; and/or
  • Includes a note that the stem is no longer formally acknowledged by the INN programme.

This article originally appeared in LSIPR published in October 2015. Click here to read the full article.

Read more

The Lanham Act codifies the idea that trademarks serve three primary functions:

  • operating as source identifiers by distinguishing the goods or services of one business or individual from those of another;
  • facilitating consumers’ purchasing decisions; and
  • acting as an economic and reputation-based incentive for mark owners.

Pursuant to 15 USC §1127, trademark protection in the United States is commonly associated with marks that are easily perceived as source identifiers – for example, “any word, name, symbol, or device, or any combination thereof… used by a person… to identify and distinguish his goods”. Thus, the term ‘trademark’ seems to be all-encompassing. Over time, the United States has gradually granted trademark protection to additional non-traditional elements or devices that serve as source identifiers for particular goods and services. In Qualitex v Jacobson Prods, Co the Supreme Court stated that “[t]he language of the Lanham Act describes [the universe of things that can qualify as a trademark] in the broadest of terms… Since human beings might use as a ‘symbol’ or ‘device’ almost anything at all that is capable of carrying meaning, this language, read literally is not restrictive” (514 US 159 (1995)). The Qualitex court granted trademark protection to colour after it decided that colour in that particular instance had acquired secondary meaning in the market.

In a market that is accelerating towards saturation, creative brand owners are continually searching for novel means to identify and safeguard their brands. In order to enhance the scope of mark owners’ rights by engaging in creative branding, many seek to obtain protection through registration of non-traditional trademarks. Highlighting a trademark’s plasticity, non-traditional marks come in many different formats, which include colour, sound, olfactory, taste, motion and three-dimensional (3D) trademarks.

Registration of non-traditional trademarks

In order to register a non-traditional mark on the Principal Register, the registration requirements for a standard application apply. The mark must be distinctive and serve as an indicator of source, and a proper drawing (except for sensory marks) and specimen of use must be provided. However, while registrable in theory, non-traditional marks undergo substantial scrutiny and unique impediments during the examination phase of the trademark application process. Although every type of trademark poses different complications for registration, non-traditional trademarks face two common issues: distinctiveness and functionality.

Acquired distinctiveness

In order to be registrable on the Principal Register, a mark must be distinctive and serve to identify a particular source of the goods or services. While some types of mark can be inherently distinctive through their intrinsic source-identifying nature, others must acquire distinctiveness before they are entitled to registration. A mark may acquire distinctiveness when consumers begin to associate it with a particular seller over time. The amount of evidence required to satisfy the burden of acquired distinctiveness depends on the nature of the trademark and the character of the evidence. Over time, a non-traditional mark may acquire secondary meaning if consumers begin to associate it with a single source. Accordingly, evidence of acquired distinctiveness may be either direct (eg, consumer surveys) or indirect (eg, promotional materials).

Functionality

The functionality doctrine also acts as an obstacle during the examination stage of a non-traditional mark application. This doctrine acts as a buffer between patent and trademark law by precluding a business from monopolising a useful product feature under the façade of identifying the feature as the source of the product. This can occur when the examining attorney concludes that the mark is utilitarian or aesthetically functional.

Under the utilitarian test, a mark is functional when it is essential to the purpose or use of the product or affects the cost or quality of the product. Alternatively, a mark may also be denied registration when it is deemed aesthetically functional. Aesthetically functional features do not contribute to the utilitarian function, but their appearance or ornamentation contributes to consumer demand for a product. In effect, this forbids the use of a product’s feature as a trademark if this will place a competitor at a significant, non-reputation-related disadvantage. Most importantly, the determination that a proposed mark is functional constitutes an absolute bar to registration on either the Principal or Supplemental Register, regardless of evidence showing that the proposed mark has acquired distinctiveness.

To determine functionality, the US Patent and Trademark Office (USPTO) will consider:

  • the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;
  • advertising by the applicant that touts the utilitarian advantages of the design;
  • facts pertaining to the availability of alternative designs; and
  • facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.

Colour trademarks

If an applicant is filing a trademark application that consists solely of colours employed in connection with specific goods or services, it must submit a drawing that displays the mark in colour, as well as:

  • a colour location statement in the description of the mark field, which names the colours of the mark and where they appear; and
  • a claim that the colours are a feature of the mark.

Colour marks cannot be categorised as inherently distinctive and applicants seeking to register a colour must satisfy the high burden of proving secondary meaning. In order to navigate these registration requirements, applicants must attach Section 2(f)-based evidence demonstrating distinctiveness. Although applicants may typically prove acquired distinctiveness through evidence of five years’ use, in the context of colour marks this alone is insufficient to show acquired distinctiveness. When reviewing Section 2(f) evidence to determine whether a single colour has acquired distinctiveness, the USPTO will look at factors such as duration of use, promotion of the colour in advertising, consumer recognition of the colour as a mark and use of colour by competitors.

Although difficult to clear, many colour marks have passed for registration by satisfying these requirements. For example, jewellery company Tiffany & Co has successfully registered the robin’s egg colour “Tiffany blue” for boxes and bags (Registrations 2,359,351 for boxes, 2,416,795 for shopping bags and 2,416,794 for catalogue covers). Further, shoe designer Christian Louboutin has registered the lacquered red outsole on women’s footwear only when it contrasts with the colour of any visible portions of the remainder of the shoe (Registration 3,361,597).

Sound trademarks

Under 37 CFR §2.52(e), sound marks may also function as source indicators when they are fixed in a definitive shape or arrangement while creating a strong connection between the sound and a good or service in the listener’s mind. For the Principal Register, sound marks must be unique or distinctive. Sound marks must be used in a way that registers in the subliminal mind of the hearer – the listener must be able to recall the mark later on a subsequent hearing in a manner that signals that a certain product or service is associated with a specific source.

Further, a mark’s form or ontological status is almost irrelevant in comparison to its source-distinguishing ability. As with a more visually perceptible type of mark, a sound can be utilised as a source indicator; thus, the mark need not be in graphic form. A sound mark depends on the listener’s aural perception. Therefore, a distinction must be made between distinctive sounds and those that resemble commonplace sounds. Commonplace sounds made in the normal course of operation may be registered only when supported by evidence that purchasers identify the sound and associate it with a single source. For instance, in Ride the Ducks, LLC v Duck Boat Tours, Inc the court noted that the quacking sound made by ducks is the kind of familiar noise that would not qualify as so inherently distinctive that evidence of secondary meaning is not necessary to link the noise to the plaintiff’s provision of an amphibious boat tour (04-CV-5595, 2005 WL 670302 (ED Pa March 21 2005).

Registration of a sound mark requires the submission of a detailed description of the mark. The applicant must describe the sound with sufficient particularity, which may be achieved by submitting the musical notes associated with a particular sound or describing it in layman’s terms (eg, “the mark comprises a lion roaring”). Applicants should also submit a specimen in audio form. Further, commonplace sounds require proof of acquired distinctiveness, whereas inherently unique or distinctive sound marks need no additional showing of secondary meaning.

Despite these complications, many sound marks have passed for registration – notably, the Metro-Goldwyn-Mayer lion roar (Registration 1,395,550) and Homer Simpson’s ‘D’oh’ exclamation (Registration 3,411,881) are both live on the Principal Register.

This article originally appeared in IAM Yearbook 2016 published in October 2015. Click here to read the full article.

The Lanham Act codifies the idea that trademarks serve three primary functions:

  • operating as source identifiers by distinguishing the goods or services of one business or individual from those of another;
  • facilitating consumers’ purchasing decisions; and
  • acting as an economic and reputation-based incentive for mark owners.

Pursuant to 15 USC §1127, trademark protection in the United States is commonly associated with marks that are easily perceived as source identifiers – for example, “any word, name, symbol, or device, or any combination thereof… used by a person… to identify and distinguish his goods”. Thus, the term ‘trademark’ seems to be all-encompassing. Over time, the United States has gradually granted trademark protection to additional non-traditional elements or devices that serve as source identifiers for particular goods and services. In Qualitex v Jacobson Prods, Co the Supreme Court stated that “[t]he language of the Lanham Act describes [the universe of things that can qualify as a trademark] in the broadest of terms… Since human beings might use as a ‘symbol’ or ‘device’ almost anything at all that is capable of carrying meaning, this language, read literally is not restrictive” (514 US 159 (1995)). The Qualitex court granted trademark protection to colour after it decided that colour in that particular instance had acquired secondary meaning in the market.

In a market that is accelerating towards saturation, creative brand owners are continually searching for novel means to identify and safeguard their brands. In order to enhance the scope of mark owners’ rights by engaging in creative branding, many seek to obtain protection through registration of non-traditional trademarks. Highlighting a trademark’s plasticity, non-traditional marks come in many different formats, which include colour, sound, olfactory, taste, motion and three-dimensional (3D) trademarks.

Registration of non-traditional trademarks

In order to register a non-traditional mark on the Principal Register, the registration requirements for a standard application apply. The mark must be distinctive and serve as an indicator of source, and a proper drawing (except for sensory marks) and specimen of use must be provided. However, while registrable in theory, non-traditional marks undergo substantial scrutiny and unique impediments during the examination phase of the trademark application process. Although every type of trademark poses different complications for registration, non-traditional trademarks face two common issues: distinctiveness and functionality.

Acquired distinctiveness

In order to be registrable on the Principal Register, a mark must be distinctive and serve to identify a particular source of the goods or services. While some types of mark can be inherently distinctive through their intrinsic source-identifying nature, others must acquire distinctiveness before they are entitled to registration. A mark may acquire distinctiveness when consumers begin to associate it with a particular seller over time. The amount of evidence required to satisfy the burden of acquired distinctiveness depends on the nature of the trademark and the character of the evidence. Over time, a non-traditional mark may acquire secondary meaning if consumers begin to associate it with a single source. Accordingly, evidence of acquired distinctiveness may be either direct (eg, consumer surveys) or indirect (eg, promotional materials).

Functionality

The functionality doctrine also acts as an obstacle during the examination stage of a non-traditional mark application. This doctrine acts as a buffer between patent and trademark law by precluding a business from monopolising a useful product feature under the façade of identifying the feature as the source of the product. This can occur when the examining attorney concludes that the mark is utilitarian or aesthetically functional.

Under the utilitarian test, a mark is functional when it is essential to the purpose or use of the product or affects the cost or quality of the product. Alternatively, a mark may also be denied registration when it is deemed aesthetically functional. Aesthetically functional features do not contribute to the utilitarian function, but their appearance or ornamentation contributes to consumer demand for a product. In effect, this forbids the use of a product’s feature as a trademark if this will place a competitor at a significant, non-reputation-related disadvantage. Most importantly, the determination that a proposed mark is functional constitutes an absolute bar to registration on either the Principal or Supplemental Register, regardless of evidence showing that the proposed mark has acquired distinctiveness.

To determine functionality, the US Patent and Trademark Office (USPTO) will consider:

  • the existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered;
  • advertising by the applicant that touts the utilitarian advantages of the design;
  • facts pertaining to the availability of alternative designs; and
  • facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture.

Colour trademarks

If an applicant is filing a trademark application that consists solely of colours employed in connection with specific goods or services, it must submit a drawing that displays the mark in colour, as well as:

  • a colour location statement in the description of the mark field, which names the colours of the mark and where they appear; and
  • a claim that the colours are a feature of the mark.

Colour marks cannot be categorised as inherently distinctive and applicants seeking to register a colour must satisfy the high burden of proving secondary meaning. In order to navigate these registration requirements, applicants must attach Section 2(f)-based evidence demonstrating distinctiveness. Although applicants may typically prove acquired distinctiveness through evidence of five years’ use, in the context of colour marks this alone is insufficient to show acquired distinctiveness. When reviewing Section 2(f) evidence to determine whether a single colour has acquired distinctiveness, the USPTO will look at factors such as duration of use, promotion of the colour in advertising, consumer recognition of the colour as a mark and use of colour by competitors.

Although difficult to clear, many colour marks have passed for registration by satisfying these requirements. For example, jewellery company Tiffany & Co has successfully registered the robin’s egg colour “Tiffany blue” for boxes and bags (Registrations 2,359,351 for boxes, 2,416,795 for shopping bags and 2,416,794 for catalogue covers). Further, shoe designer Christian Louboutin has registered the lacquered red outsole on women’s footwear only when it contrasts with the colour of any visible portions of the remainder of the shoe (Registration 3,361,597).

Sound trademarks

Under 37 CFR §2.52(e), sound marks may also function as source indicators when they are fixed in a definitive shape or arrangement while creating a strong connection between the sound and a good or service in the listener’s mind. For the Principal Register, sound marks must be unique or distinctive. Sound marks must be used in a way that registers in the subliminal mind of the hearer – the listener must be able to recall the mark later on a subsequent hearing in a manner that signals that a certain product or service is associated with a specific source.

Further, a mark’s form or ontological status is almost irrelevant in comparison to its source-distinguishing ability. As with a more visually perceptible type of mark, a sound can be utilised as a source indicator; thus, the mark need not be in graphic form. A sound mark depends on the listener’s aural perception. Therefore, a distinction must be made between distinctive sounds and those that resemble commonplace sounds. Commonplace sounds made in the normal course of operation may be registered only when supported by evidence that purchasers identify the sound and associate it with a single source. For instance, in Ride the Ducks, LLC v Duck Boat Tours, Inc the court noted that the quacking sound made by ducks is the kind of familiar noise that would not qualify as so inherently distinctive that evidence of secondary meaning is not necessary to link the noise to the plaintiff’s provision of an amphibious boat tour (04-CV-5595, 2005 WL 670302 (ED Pa March 21 2005).

Registration of a sound mark requires the submission of a detailed description of the mark. The applicant must describe the sound with sufficient particularity, which may be achieved by submitting the musical notes associated with a particular sound or describing it in layman’s terms (eg, “the mark comprises a lion roaring”). Applicants should also submit a specimen in audio form. Further, commonplace sounds require proof of acquired distinctiveness, whereas inherently unique or distinctive sound marks need no additional showing of secondary meaning.

Despite these complications, many sound marks have passed for registration – notably, the Metro-Goldwyn-Mayer lion roar (Registration 1,395,550) and Homer Simpson’s ‘D’oh’ exclamation (Registration 3,411,881) are both live on the Principal Register.

This article originally appeared in IAM Yearbook 2016 published in October 2015. Click here to read the full article.

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In order to celebrate our latest office opening in Brazil, we kicked off AIPPI with a morning cruise on Brazil's only remaining ship that served in World War One, followed by a lunch in Confeitaria Colombo, a splendid restaurant boasting over 120 years of history.

Reborcador Laurindo Pitta was built in 1910 in Great Britain. During WWI, she participated in missions countering German U-boats in the Atlantic and near Gibraltar. Until as recently as the 1990's she remained part of the Brazilian Navy. During our tour of the Guanabara Bay on board the Laurindo Pitta, we had the opportunity to not only discover the rich history of the ship, but to also enjoy a panoramic view of Rio de Janeiro.

Reborcador Laurindo Pitta

As many sailors would agree, a day at sea has a noticeable effect on one's appetite. After disembarking in Rio's old town, a light lunch was served in one of the most recognizable restaurants in Rio's old town: Confeitaria Colombo, opened in the late 1800s. And although times have changed, the marble countertops, the furniture and the stained glass ceiling still paint a vivid picture of what a good life must have been like at the beginning of the century.

For our 90 guests, as well as for our team participating at AIPPI, this morning event was the first encounter with this vibrant city. And judging from the half sentences we picked up during the cruise and stroll around the old town, it left many hungry for more.

Finally, we would like to thank Mr. Vladimir Anohin from Agency TRIA ROBIT. Known to have a passion for photography (in addition to being an accomplished European and Latvian patent, trademark and design attorney), he was kind enough to act as our official event photographer.

Click here to see more photos from the event.

In order to celebrate our latest office opening in Brazil, we kicked off AIPPI with a morning cruise on Brazil's only remaining ship that served in World War One, followed by a lunch in Confeitaria Colombo, a splendid restaurant boasting over 120 years of history.

Reborcador Laurindo Pitta was built in 1910 in Great Britain. During WWI, she participated in missions countering German U-boats in the Atlantic and near Gibraltar. Until as recently as the 1990's she remained part of the Brazilian Navy. During our tour of the Guanabara Bay on board the Laurindo Pitta, we had the opportunity to not only discover the rich history of the ship, but to also enjoy a panoramic view of Rio de Janeiro.

Reborcador Laurindo Pitta

As many sailors would agree, a day at sea has a noticeable effect on one's appetite. After disembarking in Rio's old town, a light lunch was served in one of the most recognizable restaurants in Rio's old town: Confeitaria Colombo, opened in the late 1800s. And although times have changed, the marble countertops, the furniture and the stained glass ceiling still paint a vivid picture of what a good life must have been like at the beginning of the century.

For our 90 guests, as well as for our team participating at AIPPI, this morning event was the first encounter with this vibrant city. And judging from the half sentences we picked up during the cruise and stroll around the old town, it left many hungry for more.

Finally, we would like to thank Mr. Vladimir Anohin from Agency TRIA ROBIT. Known to have a passion for photography (in addition to being an accomplished European and Latvian patent, trademark and design attorney), he was kind enough to act as our official event photographer.

Click here to see more photos from the event.

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This year's at AIPPI we hosted a cruize and a reception.

This year's at AIPPI we hosted a cruize and a reception.

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As of September 28, 2015, it is possible to file trademark applications in Canada with goods and services voluntarily grouped and classed according to the Nice Classification.

The provision of Nice classes remains voluntary for now, since the proposed legislative changes relating to the classification of goods and services according to the Nice Agreement contained in Bill C-31 are not yet in force.

According to the CIPO’s Practice Notice, in case where the Registrar of Trademarks does not agree with the applicant’s classification and where the trademark has not yet been advertised pursuant to section 37 of the Trademarks Act, the Registrar will advertise the application in the Journal without the Nice Classification, provided that all other requirements are fulfilled.

It is also important to note for now that the Trademarks Office will not grant extensions of time to allow the applicant to amend the application to include Nice classes.

Our trademark attorneys at Dennemeyer & Associates are prepared to provide further advice or assist you in filing trademark applications in Canada.
Contact us at: info@dennemeyer-law.com.

As of September 28, 2015, it is possible to file trademark applications in Canada with goods and services voluntarily grouped and classed according to the Nice Classification.

The provision of Nice classes remains voluntary for now, since the proposed legislative changes relating to the classification of goods and services according to the Nice Agreement contained in Bill C-31 are not yet in force.

According to the CIPO’s Practice Notice, in case where the Registrar of Trademarks does not agree with the applicant’s classification and where the trademark has not yet been advertised pursuant to section 37 of the Trademarks Act, the Registrar will advertise the application in the Journal without the Nice Classification, provided that all other requirements are fulfilled.

It is also important to note for now that the Trademarks Office will not grant extensions of time to allow the applicant to amend the application to include Nice classes.

Our trademark attorneys at Dennemeyer & Associates are prepared to provide further advice or assist you in filing trademark applications in Canada.
Contact us at: info@dennemeyer-law.com.

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In October we hosted events in three major German cities to exchange information about the latest developments in the IP industry.

In October we hosted events in three major German cities to exchange information about the latest developments in the IP industry.

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Effective October 1st, the international IP law firm Dennemeyer & Associates is pleased to announce the expansion of its operations in Brazil, with the opening of a new office located in the city of Rio de Janeiro. This will add an important local presence and a reliable partner to the other ten local offices in Luxembourg (HQ), Melbourne, Munich, Warsaw, Brasov, Chicago, Tokyo, Zagreb, Frankfurt and Dubai.

Brazil is the world's fifth largest country, having one of the world's fastest growing economies.  In the context of Brazil’s major industries development, the demand for IP protection will increase during the next decades.  With the setup of the new office, Dennemeyer continues to carry out its plans of consolidating the firm’s global presence and reaching out to new, developing markets.

The office in Rio, backed by Dennemeyer’s experienced international teams, provides the full suite of IP legal services, customized to the particularities characterizing this region: patent searches, clearings and surveillances; legal and technical counsel to both plaintiffs and defendants involving patent cases; preparing and filing patent applications in all areas of technology in Brazil and abroad; conducting of grant procedures before the Brazilian Patent Office, including oppositions, appeals and administrative nullity procedures; trademark and industrial design applications; payment of annuities; license, know-how and other exploitation contracts.

In addition to said services, clients will also benefit from any other of the sophisticated IP products and services offered by the Dennemeyer Group: its 360° IP Consulting Services for streamlining strategic and operational IP activities worldwide, an interactive online IP portfolio management (especially designed for trademark renewals and patent annuities), and a flexible IP management software solution (DIAMS iQ) which is amongst the forerunners on the market.

The new office will be headed by Claudio M. Szabas, co-founder and former partner of ASPEBY-SZABAS Industrial Property and with 25 years of professional experience in prosecution and maintenance of IP rights.  With a technical background in industrial controls and electronic engineering by the Universidad Tecnológica Nacional of Argentina and IP related courses like Introduction into Genetic Technology and Protection of Microbiological Inventions in Germany, he is registered to practice with the Brazilian PTO (INPI) and with the IPEA’s to act on behalf of BR PCT applicants.

From 1971 to 1990, Claudio M. Szabas worked with the engineering department of AEG Telefunken, Siemens in Argentina and with Johnson Controls’ branch in Brazil, an automation consulting firm representing US control device manufacturers merging products, engineering services and innovative technology.

Since 1990 to date, he has represented foreign and BR applicants before the Brazilian Patent Office, providing legal guidance in the obtainment of patents, trademarks and enforcement in other Latin American countries also.

Together with officers of the Brazilian PTO, he has participated in proposals to the Parliamentary Bill that resulted in the Industrial Property Law Nº 9279/96 enacted (published) in 1996 and in the draft of the BPTO regulations regarding patents and designs that were laid down by the Brazilian Patent Office.

Mr. Claudio Szabas is fluent in English, German, Portuguese and Spanish and an active and visible member of the international IP community by giving speeches at the AIPLA Annual Meetings (2009- 2011) in DC, the ASIPI (Interamerican Industrial Property Association) Annual Meeting (1998) and contributing with articles for the Patent Law International Practice Committee of IPO (Intellectual

Property Owners Association) over the last years.

“The IP industry demands continuous innovation, and we embrace the changes. I am thrilled with upcoming synergies that will result from this affiliation, something that I am sure our existing and new clients will also appreciate” underlined Mr. Szabas.

Dr. Fichter, Director of Dennemeyer & Associates, noted:

“We are happy to welcome Mr. Szabas to the Dennemeyer family. With the establishment of our new office in Rio de Janeiro we are committed to serve Mr. Szabas’ current client base at the expected quality and service level.

Dennemeyer’s global footprint offers new options on an international level to the benefit of the local Brazillian market whilst our new Brazilian office will most importantly provide services in Latin America to our existing client base. ”

You are kindly invited to contact the new office at the address below:

Dennemeyer & Associates
Avenida Nilo Peçanha 50/913
20020-906
Rio de Janeiro
BRAZIL

Phone: +55 21 2215 9550
Fax: +55 21 2210 1042

E-mail: info@dennemeyer-law.com cszabas@dennemeyer-law.com

Effective October 1st, the international IP law firm Dennemeyer & Associates is pleased to announce the expansion of its operations in Brazil, with the opening of a new office located in the city of Rio de Janeiro. This will add an important local presence and a reliable partner to the other ten local offices in Luxembourg (HQ), Melbourne, Munich, Warsaw, Brasov, Chicago, Tokyo, Zagreb, Frankfurt and Dubai.

Brazil is the world's fifth largest country, having one of the world's fastest growing economies.  In the context of Brazil’s major industries development, the demand for IP protection will increase during the next decades.  With the setup of the new office, Dennemeyer continues to carry out its plans of consolidating the firm’s global presence and reaching out to new, developing markets.

The office in Rio, backed by Dennemeyer’s experienced international teams, provides the full suite of IP legal services, customized to the particularities characterizing this region: patent searches, clearings and surveillances; legal and technical counsel to both plaintiffs and defendants involving patent cases; preparing and filing patent applications in all areas of technology in Brazil and abroad; conducting of grant procedures before the Brazilian Patent Office, including oppositions, appeals and administrative nullity procedures; trademark and industrial design applications; payment of annuities; license, know-how and other exploitation contracts.

In addition to said services, clients will also benefit from any other of the sophisticated IP products and services offered by the Dennemeyer Group: its 360° IP Consulting Services for streamlining strategic and operational IP activities worldwide, an interactive online IP portfolio management (especially designed for trademark renewals and patent annuities), and a flexible IP management software solution (DIAMS iQ) which is amongst the forerunners on the market.

The new office will be headed by Claudio M. Szabas, co-founder and former partner of ASPEBY-SZABAS Industrial Property and with 25 years of professional experience in prosecution and maintenance of IP rights.  With a technical background in industrial controls and electronic engineering by the Universidad Tecnológica Nacional of Argentina and IP related courses like Introduction into Genetic Technology and Protection of Microbiological Inventions in Germany, he is registered to practice with the Brazilian PTO (INPI) and with the IPEA’s to act on behalf of BR PCT applicants.

From 1971 to 1990, Claudio M. Szabas worked with the engineering department of AEG Telefunken, Siemens in Argentina and with Johnson Controls’ branch in Brazil, an automation consulting firm representing US control device manufacturers merging products, engineering services and innovative technology.

Since 1990 to date, he has represented foreign and BR applicants before the Brazilian Patent Office, providing legal guidance in the obtainment of patents, trademarks and enforcement in other Latin American countries also.

Together with officers of the Brazilian PTO, he has participated in proposals to the Parliamentary Bill that resulted in the Industrial Property Law Nº 9279/96 enacted (published) in 1996 and in the draft of the BPTO regulations regarding patents and designs that were laid down by the Brazilian Patent Office.

Mr. Claudio Szabas is fluent in English, German, Portuguese and Spanish and an active and visible member of the international IP community by giving speeches at the AIPLA Annual Meetings (2009- 2011) in DC, the ASIPI (Interamerican Industrial Property Association) Annual Meeting (1998) and contributing with articles for the Patent Law International Practice Committee of IPO (Intellectual

Property Owners Association) over the last years.

“The IP industry demands continuous innovation, and we embrace the changes. I am thrilled with upcoming synergies that will result from this affiliation, something that I am sure our existing and new clients will also appreciate” underlined Mr. Szabas.

Dr. Fichter, Director of Dennemeyer & Associates, noted:

“We are happy to welcome Mr. Szabas to the Dennemeyer family. With the establishment of our new office in Rio de Janeiro we are committed to serve Mr. Szabas’ current client base at the expected quality and service level.

Dennemeyer’s global footprint offers new options on an international level to the benefit of the local Brazillian market whilst our new Brazilian office will most importantly provide services in Latin America to our existing client base. ”

You are kindly invited to contact the new office at the address below:

Dennemeyer & Associates
Avenida Nilo Peçanha 50/913
20020-906
Rio de Janeiro
BRAZIL

Phone: +55 21 2215 9550
Fax: +55 21 2210 1042

E-mail: info@dennemeyer-law.com cszabas@dennemeyer-law.com

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In the multifaceted trademark world, you may think your trademark renewal vendor meets your needs and has a robust plan, but is this true? What are the (unidentified) weak links in your trademark vendor’s service?

Imagine your renewal service as a blank page in your IP coloring book; how you examine it will fill the colors in and build a vibrant trademark operation.

Here are four of the most common weak links in renewal services- and how to fix it.

1: You are contracting for more services than you need

Each company and trademark team has different needs, but renewal services are one-size-fits-all. The typical service is a single model that bases the price on the number of trademark records. If you need less services then offered, the price ussually stays the same. Maybe some minor modifications.

The result is that you leave money on the table by purchasing services not needed.

Fix: Ask your vendor what options they have to reduce the level of services they offer (if any) and understand the impact on price. Then, create a list of your internal processes and map this to the (reduced) services offered.

This one-to-one process map helps to clearly identify required areas of support and a better understanding of what you may not need. Then, you may have an opportunity to drop unneeded service options.

This is a basic, yet essential, step to start coloring in your trademark renewal page.

By way of example, Dennemeyer’s Standard Renewal plan is very cost-efficient. It comes with a standard set of processes and procedures. There is flexibility, but with the flexibility comes additional cost. The mapping process helps determine what additional functions are needed, if any.

Many may find that they can adjust their internal processes to make the Standard offering work and deliver significant cost savings in the process.

2: ‘Low-cost’ but obscure services provided

You are ecstatic to sign on for an incredibly low renewal rate and expect significant savings.  However, somehow, the savings never seem to materialize. Sounds familiar? The renewal vendor may offer a fantastic per record rate and obscure other charges.

This causes frustration and anxiety as you fail to deliver the cost savings expected.

Fix: Look beyond the “per record fee”. Request and examine a full list of potential “other fees” and carefully compare this to your list of exceptions and common situations.

For example, do you often require an assignment change at the time of renewal? Does the renewal vendor do this and if so, is there a cost? What do they charge you to notarize a document?  What do they charge for a courier?

When you couple this examination with Link 1, the service itself, your coloring page is over half full of brilliant details.

3: Feeble agent network and limited direct filings

Each vendor, firm, and company will have their own agent network, but what are their strengths? How do you know an agent in Country X provides the best rate? Direct filing is always the best as it eliminates the agent fee, and for the rest, a reliable agent network is vital.

Building, then sustaining, such a reliable network can be time-consuming and uncertain.

Fix: Examine the vendor’s agent network. What are their agent requirements? How do they hold them accountable and to what standards? Dennemeyer will allow you to continue to use your existing foreign agent network, but doing so is often more expensive than renewing through their network.

Think of it as coloring in the critical pieces of your page for a cohesive image.

By example, one recent customer reduced their agent fees by almost 30% by going to the Dennemeyer network; they also reduced their ‘per record fees’ by 56%. If they had shifted to the Dennemeyer Standard offering they could have reduced their service fees by 81%.

4: Lag in updates for legal changes across jurisdictions or increase in the official fees

It takes fortitude and time to track each country’s renewal requirements. Are you being proactive? Consistently? For example, what changes go into effect in the British Virgin Island September 2015? [Hint: no longer possible to extend UK-based registrations.] Did you know that in May 2015 the official trademark renewal fees in Venezuela have increased by +/- 1300%?

It is more time effective to relieve your internal group and outsource this activity to your vendor. However, your vendor must not lag in tracking or communicating jurisdiction changes and requirements.

Fix: Inspect your vendor’s procedures on communicating and tracking jurisdiction changes. How often do they provide an update? How or when will they communicate?

Though this last link is the most fluid, by giving pre-consideration to an often overlooked area, your trademark renewal coloring page is now complete.

No Weak Links

A brilliant coloring page is hard to fill in. But, when you scrutinize vendors against these four weak links, you will be armed with the intelligence needed to make the right choice.

Dennemeyer’s customers can choose between scaled service plans that fit each organization's particular needs. Interested in comparing services to see how much money you are leaving on the table?

Contact a Dennemeyer representative today: www.dennemeyer.com

In the multifaceted trademark world, you may think your trademark renewal vendor meets your needs and has a robust plan, but is this true? What are the (unidentified) weak links in your trademark vendor’s service?

Imagine your renewal service as a blank page in your IP coloring book; how you examine it will fill the colors in and build a vibrant trademark operation.

Here are four of the most common weak links in renewal services- and how to fix it.

1: You are contracting for more services than you need

Each company and trademark team has different needs, but renewal services are one-size-fits-all. The typical service is a single model that bases the price on the number of trademark records. If you need less services then offered, the price ussually stays the same. Maybe some minor modifications.

The result is that you leave money on the table by purchasing services not needed.

Fix: Ask your vendor what options they have to reduce the level of services they offer (if any) and understand the impact on price. Then, create a list of your internal processes and map this to the (reduced) services offered.

This one-to-one process map helps to clearly identify required areas of support and a better understanding of what you may not need. Then, you may have an opportunity to drop unneeded service options.

This is a basic, yet essential, step to start coloring in your trademark renewal page.

By way of example, Dennemeyer’s Standard Renewal plan is very cost-efficient. It comes with a standard set of processes and procedures. There is flexibility, but with the flexibility comes additional cost. The mapping process helps determine what additional functions are needed, if any.

Many may find that they can adjust their internal processes to make the Standard offering work and deliver significant cost savings in the process.

2: ‘Low-cost’ but obscure services provided

You are ecstatic to sign on for an incredibly low renewal rate and expect significant savings.  However, somehow, the savings never seem to materialize. Sounds familiar? The renewal vendor may offer a fantastic per record rate and obscure other charges.

This causes frustration and anxiety as you fail to deliver the cost savings expected.

Fix: Look beyond the “per record fee”. Request and examine a full list of potential “other fees” and carefully compare this to your list of exceptions and common situations.

For example, do you often require an assignment change at the time of renewal? Does the renewal vendor do this and if so, is there a cost? What do they charge you to notarize a document?  What do they charge for a courier?

When you couple this examination with Link 1, the service itself, your coloring page is over half full of brilliant details.

3: Feeble agent network and limited direct filings

Each vendor, firm, and company will have their own agent network, but what are their strengths? How do you know an agent in Country X provides the best rate? Direct filing is always the best as it eliminates the agent fee, and for the rest, a reliable agent network is vital.

Building, then sustaining, such a reliable network can be time-consuming and uncertain.

Fix: Examine the vendor’s agent network. What are their agent requirements? How do they hold them accountable and to what standards? Dennemeyer will allow you to continue to use your existing foreign agent network, but doing so is often more expensive than renewing through their network.

Think of it as coloring in the critical pieces of your page for a cohesive image.

By example, one recent customer reduced their agent fees by almost 30% by going to the Dennemeyer network; they also reduced their ‘per record fees’ by 56%. If they had shifted to the Dennemeyer Standard offering they could have reduced their service fees by 81%.

4: Lag in updates for legal changes across jurisdictions or increase in the official fees

It takes fortitude and time to track each country’s renewal requirements. Are you being proactive? Consistently? For example, what changes go into effect in the British Virgin Island September 2015? [Hint: no longer possible to extend UK-based registrations.] Did you know that in May 2015 the official trademark renewal fees in Venezuela have increased by +/- 1300%?

It is more time effective to relieve your internal group and outsource this activity to your vendor. However, your vendor must not lag in tracking or communicating jurisdiction changes and requirements.

Fix: Inspect your vendor’s procedures on communicating and tracking jurisdiction changes. How often do they provide an update? How or when will they communicate?

Though this last link is the most fluid, by giving pre-consideration to an often overlooked area, your trademark renewal coloring page is now complete.

No Weak Links

A brilliant coloring page is hard to fill in. But, when you scrutinize vendors against these four weak links, you will be armed with the intelligence needed to make the right choice.

Dennemeyer’s customers can choose between scaled service plans that fit each organization's particular needs. Interested in comparing services to see how much money you are leaving on the table?

Contact a Dennemeyer representative today: www.dennemeyer.com

Read more

Exclusion of biotechnological inventions from patentability – problems and solutions.

In 2014, biotechnology was one of the three technological fields in which patent applications filed at the European Patent Office (EPO) grew the fastest. An increase of 12.1% led to over 5,900 biotech patent filings. As these applications are substantially examined by the office for patentability, often problems with patentability are encountered. Some of these problems, as well as possible solutions, are discussed herein.

At the EPO, patents are not granted for plant or animal varieties, or “essentially biological processes for the production of plants or animals.” The relevant provision of the law can lead to severe objections from the EPO’s patent examiners. For example, in the past, the question arose whether the exclusion of essentially biological processes also precludes patents directed to plants or plant material such as fruit. This question is particularly relevant for a scenario in which the only available method for generating such plants or plant material is actually an essentially biological process.

Another problem in this context is how the plants or plant materials can be described in a patent application, specifically in cases where they are predominantly characterized by their way of production. This is because an indirect description of a product by virtue of its synthesis or production method is often not allowed in patents.

Additionally, biotechnology is a cutting-edge technology. Cutting-edge means that new production methods and analytical tools for monitoring them are continuously developed. When such methods and analytical tools shall be used in patent applications for defining the invention, the inventor might consider the applied techniques “usual”. Patent examiners however, might not be aware of the very latest developments in that technical field. Then, the definitions used for describing the invention could easily be considered “unusual” and “unusual” definitions are not allowed in patent law.

Solutions for obtaining patents for biotechnological inventions

Good news for the biotechnological industry comes from the EPO’s highest legal authority (the Enlarged Board of Appeal). The Board has recently ruled that the exclusion of essentially biological processes does not preclude the grant of a patent claim directed to a plant obtained in such a process. This is contrary to some national patent laws in Europe. Accordingly, applicants who intend to obtain a patent for such plants in Europe should be aware that the best way of doing so is by filing their patent applications at the European Patent Office.

Further, according to the Board, the patentability exclusion does not extend to so called product-by-process patent claims. Such product-by-process claims are a way of indirectly defining a biotechnological invention, e.g. plants or plant materials defined by reference to their synthesis or production methods. Product-by-process claims must be carefully worded; however, they are a way out of the dilemma that an indirect product description in a patent is potentially not allowable, but would be factually necessary. The patent applicant should consider how to best phrase their patent claims in order to solve the problem in this manner.

With regard to how to define the invention in the patent claims, it is recommendable to try to describe and define the invention by parameters, production methods, and analytical methods that can reasonably be considered “usual”. Where this is not possible, referring to manuals or textbooks can be of help. This also holds true for references to frequently used ASTM/ISO standards, pharmacopoeias, and the like. The best way forward is a detailed description of the parameters, production methods, and analytical methods in the patent application itself and preferably in the patent claims.

Conclusion

When filing patent applications for biotechnological inventions, the inventor should make sure that the application is drafted and filed with a view to problems and solutions the application may face upon examination. When doing so, patents for biotechnological inventions may well be granted. So yes, biotechnology is patentable when done carefully.

This article originally appeared in Going Public Magazine, published in September 2015. Click here to read the full article.

Exclusion of biotechnological inventions from patentability – problems and solutions.

In 2014, biotechnology was one of the three technological fields in which patent applications filed at the European Patent Office (EPO) grew the fastest. An increase of 12.1% led to over 5,900 biotech patent filings. As these applications are substantially examined by the office for patentability, often problems with patentability are encountered. Some of these problems, as well as possible solutions, are discussed herein.

At the EPO, patents are not granted for plant or animal varieties, or “essentially biological processes for the production of plants or animals.” The relevant provision of the law can lead to severe objections from the EPO’s patent examiners. For example, in the past, the question arose whether the exclusion of essentially biological processes also precludes patents directed to plants or plant material such as fruit. This question is particularly relevant for a scenario in which the only available method for generating such plants or plant material is actually an essentially biological process.

Another problem in this context is how the plants or plant materials can be described in a patent application, specifically in cases where they are predominantly characterized by their way of production. This is because an indirect description of a product by virtue of its synthesis or production method is often not allowed in patents.

Additionally, biotechnology is a cutting-edge technology. Cutting-edge means that new production methods and analytical tools for monitoring them are continuously developed. When such methods and analytical tools shall be used in patent applications for defining the invention, the inventor might consider the applied techniques “usual”. Patent examiners however, might not be aware of the very latest developments in that technical field. Then, the definitions used for describing the invention could easily be considered “unusual” and “unusual” definitions are not allowed in patent law.

Solutions for obtaining patents for biotechnological inventions

Good news for the biotechnological industry comes from the EPO’s highest legal authority (the Enlarged Board of Appeal). The Board has recently ruled that the exclusion of essentially biological processes does not preclude the grant of a patent claim directed to a plant obtained in such a process. This is contrary to some national patent laws in Europe. Accordingly, applicants who intend to obtain a patent for such plants in Europe should be aware that the best way of doing so is by filing their patent applications at the European Patent Office.

Further, according to the Board, the patentability exclusion does not extend to so called product-by-process patent claims. Such product-by-process claims are a way of indirectly defining a biotechnological invention, e.g. plants or plant materials defined by reference to their synthesis or production methods. Product-by-process claims must be carefully worded; however, they are a way out of the dilemma that an indirect product description in a patent is potentially not allowable, but would be factually necessary. The patent applicant should consider how to best phrase their patent claims in order to solve the problem in this manner.

With regard to how to define the invention in the patent claims, it is recommendable to try to describe and define the invention by parameters, production methods, and analytical methods that can reasonably be considered “usual”. Where this is not possible, referring to manuals or textbooks can be of help. This also holds true for references to frequently used ASTM/ISO standards, pharmacopoeias, and the like. The best way forward is a detailed description of the parameters, production methods, and analytical methods in the patent application itself and preferably in the patent claims.

Conclusion

When filing patent applications for biotechnological inventions, the inventor should make sure that the application is drafted and filed with a view to problems and solutions the application may face upon examination. When doing so, patents for biotechnological inventions may well be granted. So yes, biotechnology is patentable when done carefully.

This article originally appeared in Going Public Magazine, published in September 2015. Click here to read the full article.

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Thomas L. Lederer, Patent Attorney, Dennemeyer & Associates, explores the evolution of patentability of computer-implemented inventions.

The quote “Everything that can be invented has been invented” is often attributed to Charles H. Duell, who was the Commissioner of the US patent office in 1899.

Recently Gene Quinn (of ipwatchdog.com) commented on the time span taken to issue the nine millionth US patent on April 7, 2015. During the time Mr Duell (and others of course) were in office, it took the US Patent and Trademark Office 75 years to issue the first million patents. The time span to issue the ninth million patents was only three and a half years. I guess Mr Duell was wrong.

The world of intellectual property rights is not always easy to understand for laymen – and sometimes even for lawyers. In particular, when it comes to popular inventions like Amazon’s “1 click” patent and Apple’s “slide to unlock” patent. With technologies like these, which are very visible to everyone on the internet or on handheld or personal devices, an opinion about how worthy they are of being a granted patent is quickly made. Sometimes, even if the underlying principles are novel and inventive according to legal standards, the public might consider them to be obvious or at least to be only tiny advances in the technology according to the prior art known to them, and thus not worth a patent.

However, for the companies involved – either as applicants, as possible infringers or as competitors deprived of a feature to include in their products – a lot of money is at stake. Sometimes also pride and prestige are endangered by the fate of patent applications.

Consequently, fierce battles can arise from patent applications, regardless of whether the inventions are seemingly small and even more so if the protected subject matters are exposed to the public in everyday life.

Amazon’s “1 click” patent and Apple’s “slide to unlock” patent

Amazon’s patent (EP 1 134 680) was much discussed in 2011 after the Board of Appeal decided on January 27, 2011 in T1244/07 that the claims were lacking an inventive step, such that the European patent was never granted in the first place (unlike, for example, in the United States and Canada).

More recently, the German part of Apple’s “slide to unlock” European patent (EP 1 964 022) was revoked by the Federal Court of Justice of Germany on August 25, 2015 (decision X ZR 110/13). According to the corresponding local databases, the legal status regarding this patent or patent application is not consistent. In Finland opposition procedures are pending, while the patent is in force in the United Kingdom, France, Spain, the Czech Republic, Ireland, the Netherlands, and – of all countries – Sweden. After all, it was the phone (called N1) of Swedish company Neonode that the Federal Court of Justice of Germany considered to be the piece of prior art most relevant to the “slide to unlock” technique of Apple.

Not surprisingly, however, the Federal Court has seemingly not discussed general patentability of technologies like this, since allowability was denied on the ground of lack of inventiveness over the N1 phone. So with the patent being in force in some countries and revoked in other countries, deciding the questions of patentability and allowability – mostly inventiveness – is obviously not an easy task, even if the public might consider these questions to be straightforward from their gut instinct.

Current developments in Germany and Europe

In search of guidelines, on what gestures might be patentable, one can turn to the collection of decisions of the Boards of Appeal of the European Patent Office. Therein two decisions can be found from this year which deal with gesture control of electronic devices, although with different outcomes.

In T1911/10 (decision of June 3, 2015) the Board of Appeal confirmed inventiveness of the invention “Gesture recognition simulation system and method”.

This application is directed towards gesture recognition with the camera system and as such has not the simplicity of a “slide to unlock” application. Therefore, we learn nothing about the patentability of gestures as such, because the camera system utilized in the claims of this application contributes to the inventive step too. The Board rather notes: “[...] that the gesture recognition performed in D3 is therefore more limited than the gesture recognition performed in D1. Since the camera-based system of D3 cannot provide the full functionality of the glove-based system of D1, it would not be obvious to the skilled person to replace the gloves and EM sensors of D1 by the camera based system of D3.” Thus the combination of prior art documents D1 and D3 does not render the application obvious.

Further, in decision T 1958/13 from June 12, 2015, the Board of Appeal denied the presence of an inventive step of a “single drag gesture” based on the prior art available.

The claimed subject-matter in that case is directed to recognize a drag gesture on a touch screen over text and to cut or delete the corresponding text. However, with the prior art available, the Board concludes that “applying two operations (e.g. text selection and text deletion) with one stroke on a touch-screen device was well within the reach of the skilled person at the application’s priority date.”

Another interesting decision (X ZB 1/15 – “Flugzeugzustand”) was recently issued by the Federal Court of Justice of Germany on June 30, 2015. The application under judgment deals with mathematical methods, which are excluded from patentability in Germany by law (very similar to the corresponding Art. 52 of the European Patent Convention). In particular, German law does not consider mathematical methods as inventions, but allows patents on them as long as the mathematical methods are not claimed “as such”. The “as such” or “per se” clause is also well known under the EPC, but the recent decision gives a further insight into the interpretation of the Federal Court.

In the official head notes, the Federal Court says that mathematical methods are regarded as inventions only if they contribute to solving a specific technical problem by technical means. Further, a mathematical method is only considered to be non-technical if – in connection with the claimed teaching – it does not relate to the specific application of natural forces. A sufficient relationship to a specific application of natural forces is only present if the mathematical method is used to determine – based on the available measured values – more reliable findings on the status of a plane, and if thereby an influence is exercised on the operation mode of the system that was used to determine this status.

With this decision, the Federal Court seems to allow patents on mathematical methods, if the operation of a technical system is involved. Thereby, this decision seems to be in line with the Federal Court decision in X ZB 11/98 (“Logikverfikation”) and similar to the EPO Board of Appeal decision T1173/97 (“Computerprogrammprodukt/IBM”).

In the latter, a computer program product is not excluded from patentability if it produces a further technical effect which goes beyond the “normal” physical interactions between program (software) and computer (hardware), when it is run on a computer.

Current developments in India

Also very recently, the Indian Patent Office has published updated guidelines on patentability of computer related inventions, showing a broad interpretation of section 3(k) of the Indian Patents Act, which relates to software patents and computer related inventions.

Similar to other jurisdictions, this section 3(k) states that “a mathematical or business method or a computer program per se or algorithms” is excluded from patentability, and previously the interpretation of the term “per se” regarding computer programs has been very narrow. Consequently the patentability of programs was connected to an involvement of new hardware. Thus a computer program was only available for patenting when the hardware showed features that made it different form a common place apparatus, in other words a general-purpose machine.

According to the new guidelines and its broader interpretation:

For being considered patentable, the subject matter should involve either

• a novel hardware, or

• a novel hardware with a novel computer program, or

• a novel computer program with a known hardware which goes beyond the normal interaction with such hardware and affects a change in the functionality and/or performance of the existing hardware.

A computer program, when running on or loaded into a computer, going beyond the “normal” physical interactions between the software and the hardware on which it is run, and is capable of bringing further technical effect may not be considered as exclusion under these provisions.” (Citation of the guidelines).

The guidelines continue with listing certain indicators, of which only one needs to be positively answered in order to negate the exclusion from patentability.

These indicator questions should be used by the Examiner to determine technical advancement:

• Does the claimed technical feature have a technical contribution on a process which is carried on outside the computer?

• Does the claimed technical feature operate at the level of the architecture of the computer?

• Does the technical contribution work by way of change in the hardware or the functionality of hardware?

• Does the claimed technical contribution result in the computer being made to operate in a new way?

• In case of a computer program linked with hardware, does the program make the computer a better computer in the sense of running more efficiently and effectively as a computer?

• Does the change in the hardware or the functionality of hardware amount to technical advancement?

The guidelines also contain illustrative examples for claims considered to be excluded from patentability and for claims considered to be not excluded from patentability.

All in all, getting a patent in India for a computer implemented invention does seem to become easier under the new guidelines.

However, there are no empirical values regarding the application of the guidelines by the Examiners, yet.

Conclusion

In summary, even if a patent on a gesture – like “slide to unlock” – might seem trivial to users of handheld devices, the underlying technical principals might very well be patentable in general. With the proliferation and ubiquity of handheld devices and touch screens, patents on such technologies might recede but other areas of intellectual property might rise, like mathematical methods and algorithms, which are often the foundation of computer-implemented inventions. And so in summary, there are still a lot of inventions that can be invented and patented.

This article originally appeared in Patent Lawyer Magazine, published in September 2015. Click here to read the full article.

 

 

 

Thomas L. Lederer, Patent Attorney, Dennemeyer & Associates, explores the evolution of patentability of computer-implemented inventions.

The quote “Everything that can be invented has been invented” is often attributed to Charles H. Duell, who was the Commissioner of the US patent office in 1899.

Recently Gene Quinn (of ipwatchdog.com) commented on the time span taken to issue the nine millionth US patent on April 7, 2015. During the time Mr Duell (and others of course) were in office, it took the US Patent and Trademark Office 75 years to issue the first million patents. The time span to issue the ninth million patents was only three and a half years. I guess Mr Duell was wrong.

The world of intellectual property rights is not always easy to understand for laymen – and sometimes even for lawyers. In particular, when it comes to popular inventions like Amazon’s “1 click” patent and Apple’s “slide to unlock” patent. With technologies like these, which are very visible to everyone on the internet or on handheld or personal devices, an opinion about how worthy they are of being a granted patent is quickly made. Sometimes, even if the underlying principles are novel and inventive according to legal standards, the public might consider them to be obvious or at least to be only tiny advances in the technology according to the prior art known to them, and thus not worth a patent.

However, for the companies involved – either as applicants, as possible infringers or as competitors deprived of a feature to include in their products – a lot of money is at stake. Sometimes also pride and prestige are endangered by the fate of patent applications.

Consequently, fierce battles can arise from patent applications, regardless of whether the inventions are seemingly small and even more so if the protected subject matters are exposed to the public in everyday life.

Amazon’s “1 click” patent and Apple’s “slide to unlock” patent

Amazon’s patent (EP 1 134 680) was much discussed in 2011 after the Board of Appeal decided on January 27, 2011 in T1244/07 that the claims were lacking an inventive step, such that the European patent was never granted in the first place (unlike, for example, in the United States and Canada).

More recently, the German part of Apple’s “slide to unlock” European patent (EP 1 964 022) was revoked by the Federal Court of Justice of Germany on August 25, 2015 (decision X ZR 110/13). According to the corresponding local databases, the legal status regarding this patent or patent application is not consistent. In Finland opposition procedures are pending, while the patent is in force in the United Kingdom, France, Spain, the Czech Republic, Ireland, the Netherlands, and – of all countries – Sweden. After all, it was the phone (called N1) of Swedish company Neonode that the Federal Court of Justice of Germany considered to be the piece of prior art most relevant to the “slide to unlock” technique of Apple.

Not surprisingly, however, the Federal Court has seemingly not discussed general patentability of technologies like this, since allowability was denied on the ground of lack of inventiveness over the N1 phone. So with the patent being in force in some countries and revoked in other countries, deciding the questions of patentability and allowability – mostly inventiveness – is obviously not an easy task, even if the public might consider these questions to be straightforward from their gut instinct.

Current developments in Germany and Europe

In search of guidelines, on what gestures might be patentable, one can turn to the collection of decisions of the Boards of Appeal of the European Patent Office. Therein two decisions can be found from this year which deal with gesture control of electronic devices, although with different outcomes.

In T1911/10 (decision of June 3, 2015) the Board of Appeal confirmed inventiveness of the invention “Gesture recognition simulation system and method”.

This application is directed towards gesture recognition with the camera system and as such has not the simplicity of a “slide to unlock” application. Therefore, we learn nothing about the patentability of gestures as such, because the camera system utilized in the claims of this application contributes to the inventive step too. The Board rather notes: “[...] that the gesture recognition performed in D3 is therefore more limited than the gesture recognition performed in D1. Since the camera-based system of D3 cannot provide the full functionality of the glove-based system of D1, it would not be obvious to the skilled person to replace the gloves and EM sensors of D1 by the camera based system of D3.” Thus the combination of prior art documents D1 and D3 does not render the application obvious.

Further, in decision T 1958/13 from June 12, 2015, the Board of Appeal denied the presence of an inventive step of a “single drag gesture” based on the prior art available.

The claimed subject-matter in that case is directed to recognize a drag gesture on a touch screen over text and to cut or delete the corresponding text. However, with the prior art available, the Board concludes that “applying two operations (e.g. text selection and text deletion) with one stroke on a touch-screen device was well within the reach of the skilled person at the application’s priority date.”

Another interesting decision (X ZB 1/15 – “Flugzeugzustand”) was recently issued by the Federal Court of Justice of Germany on June 30, 2015. The application under judgment deals with mathematical methods, which are excluded from patentability in Germany by law (very similar to the corresponding Art. 52 of the European Patent Convention). In particular, German law does not consider mathematical methods as inventions, but allows patents on them as long as the mathematical methods are not claimed “as such”. The “as such” or “per se” clause is also well known under the EPC, but the recent decision gives a further insight into the interpretation of the Federal Court.

In the official head notes, the Federal Court says that mathematical methods are regarded as inventions only if they contribute to solving a specific technical problem by technical means. Further, a mathematical method is only considered to be non-technical if – in connection with the claimed teaching – it does not relate to the specific application of natural forces. A sufficient relationship to a specific application of natural forces is only present if the mathematical method is used to determine – based on the available measured values – more reliable findings on the status of a plane, and if thereby an influence is exercised on the operation mode of the system that was used to determine this status.

With this decision, the Federal Court seems to allow patents on mathematical methods, if the operation of a technical system is involved. Thereby, this decision seems to be in line with the Federal Court decision in X ZB 11/98 (“Logikverfikation”) and similar to the EPO Board of Appeal decision T1173/97 (“Computerprogrammprodukt/IBM”).

In the latter, a computer program product is not excluded from patentability if it produces a further technical effect which goes beyond the “normal” physical interactions between program (software) and computer (hardware), when it is run on a computer.

Current developments in India

Also very recently, the Indian Patent Office has published updated guidelines on patentability of computer related inventions, showing a broad interpretation of section 3(k) of the Indian Patents Act, which relates to software patents and computer related inventions.

Similar to other jurisdictions, this section 3(k) states that “a mathematical or business method or a computer program per se or algorithms” is excluded from patentability, and previously the interpretation of the term “per se” regarding computer programs has been very narrow. Consequently the patentability of programs was connected to an involvement of new hardware. Thus a computer program was only available for patenting when the hardware showed features that made it different form a common place apparatus, in other words a general-purpose machine.

According to the new guidelines and its broader interpretation:

For being considered patentable, the subject matter should involve either

• a novel hardware, or

• a novel hardware with a novel computer program, or

• a novel computer program with a known hardware which goes beyond the normal interaction with such hardware and affects a change in the functionality and/or performance of the existing hardware.

A computer program, when running on or loaded into a computer, going beyond the “normal” physical interactions between the software and the hardware on which it is run, and is capable of bringing further technical effect may not be considered as exclusion under these provisions.” (Citation of the guidelines).

The guidelines continue with listing certain indicators, of which only one needs to be positively answered in order to negate the exclusion from patentability.

These indicator questions should be used by the Examiner to determine technical advancement:

• Does the claimed technical feature have a technical contribution on a process which is carried on outside the computer?

• Does the claimed technical feature operate at the level of the architecture of the computer?

• Does the technical contribution work by way of change in the hardware or the functionality of hardware?

• Does the claimed technical contribution result in the computer being made to operate in a new way?

• In case of a computer program linked with hardware, does the program make the computer a better computer in the sense of running more efficiently and effectively as a computer?

• Does the change in the hardware or the functionality of hardware amount to technical advancement?

The guidelines also contain illustrative examples for claims considered to be excluded from patentability and for claims considered to be not excluded from patentability.

All in all, getting a patent in India for a computer implemented invention does seem to become easier under the new guidelines.

However, there are no empirical values regarding the application of the guidelines by the Examiners, yet.

Conclusion

In summary, even if a patent on a gesture – like “slide to unlock” – might seem trivial to users of handheld devices, the underlying technical principals might very well be patentable in general. With the proliferation and ubiquity of handheld devices and touch screens, patents on such technologies might recede but other areas of intellectual property might rise, like mathematical methods and algorithms, which are often the foundation of computer-implemented inventions. And so in summary, there are still a lot of inventions that can be invented and patented.

This article originally appeared in Patent Lawyer Magazine, published in September 2015. Click here to read the full article.

 

 

 

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Since joining the U.S. office as COO, Cary Levitt has been invited to participate in multiple industry events. Mr. Levitt will be speaking at two upcoming conferences: World IP Forum in Bangkok, and IP Strategy Innovation Summit in Boston. He will also be moderating a panel on the evolving market of patent monetization on at the Chief IP Counsel Exchange in Dallas, Texas.

Having been a trusted advisor at a law firm, an in-house counsel, and now at an IP services provider, Mr. Levitt will share his unique industry perspective, as well as specific best practices. “I'm always excited for the opportunity to share my industry knowledge and also learn what other practitioners are doing,” says Cary Levitt. “The IP industry is dynamic and continuing to draw new boundaries related to the production of novel intellectual property and ensuring adequate returns on investment.

The World IP Forum will take place September 15-17 in Bangkok, Thailand; the theme is "IP as a commercial tool in Designing the Future". Mr. Levitt will lead a panel focused on Standard Essential Patents (SEPs). The main issues concerning the exercise of SEP rights include:

  • Holding-up vs. Holding-out of the patents
  • Patent rights transfer and the efficacy of FRAND declarations
  • Asymmetry between patent rights holder and implementer

The IP Strategy Innovation Summit will take place on October 28-29 in Boston, MA, US; the theme is "Enabling Sustained Capability." Mr. Levitt will speak on the changes in in-house IP legal departments. One key area of change has been with IP service provider solutions. This presentation will uncover the top 10 standards you should use to benchmark your IP services providers.

At the Chief IP Counsel Exchange on September 27 in Dallas, Texas, Mr. Levitt will be the moderator for the conference’s opening panel discussion titled “The Evolving Landscape in IP Monetization: Innovation will not be Postponed.” The panel will have a candid discussion on the evolving landscape of IP valuation and monetization.

 

Since joining the U.S. office as COO, Cary Levitt has been invited to participate in multiple industry events. Mr. Levitt will be speaking at two upcoming conferences: World IP Forum in Bangkok, and IP Strategy Innovation Summit in Boston. He will also be moderating a panel on the evolving market of patent monetization on at the Chief IP Counsel Exchange in Dallas, Texas.

Having been a trusted advisor at a law firm, an in-house counsel, and now at an IP services provider, Mr. Levitt will share his unique industry perspective, as well as specific best practices. “I'm always excited for the opportunity to share my industry knowledge and also learn what other practitioners are doing,” says Cary Levitt. “The IP industry is dynamic and continuing to draw new boundaries related to the production of novel intellectual property and ensuring adequate returns on investment.

The World IP Forum will take place September 15-17 in Bangkok, Thailand; the theme is "IP as a commercial tool in Designing the Future". Mr. Levitt will lead a panel focused on Standard Essential Patents (SEPs). The main issues concerning the exercise of SEP rights include:

  • Holding-up vs. Holding-out of the patents
  • Patent rights transfer and the efficacy of FRAND declarations
  • Asymmetry between patent rights holder and implementer

The IP Strategy Innovation Summit will take place on October 28-29 in Boston, MA, US; the theme is "Enabling Sustained Capability." Mr. Levitt will speak on the changes in in-house IP legal departments. One key area of change has been with IP service provider solutions. This presentation will uncover the top 10 standards you should use to benchmark your IP services providers.

At the Chief IP Counsel Exchange on September 27 in Dallas, Texas, Mr. Levitt will be the moderator for the conference’s opening panel discussion titled “The Evolving Landscape in IP Monetization: Innovation will not be Postponed.” The panel will have a candid discussion on the evolving landscape of IP valuation and monetization.

 

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If well executed, strategic intellectual property (IP) management can contribute to top-line results and also enhance the bottom line, says Sevim Süzeroglu-Melchiors, IP expert at Dennemeyer Consulting, an international IP management specialist.

Hans-Georg Greif, head of patents at RWE, adds: “In a joint project team with Dennemeyer Consulting, we developed our new patent strategy, organisation, processes, resources and basics for software tools. I am proud that our implemented patent competence centre passed several, even externally driven, assessments, with the result that our patent management is up to date with no need to improve further.”

Efficient IP management is important to handle the growing number of patents and trade marks, as companies are now filing more and more IP rights.

Patent Explosion

All major patent offices around the world are exposed to a patent explosion. Over the past five years, the number of patent applications filed globally has grown by 33.5 per cent. The trend is particularly dramatic in some commercially significant technologies. In computer technology, for example, the increase is 85 per cent.

On top of the increase in numbers is the complexity and intricacy of patents. In recent years, the growth in patent voluminosity has become extreme. For example, the European Patent Office received an application with 283 priorities, 80,259 sequences and an estimated 50,000 pages in a biotechnology application filed together with genetic sequence listings.

Paradoxically, this increase in patent activity does not seem to be the result of a boost in research and development spending. R&D expenditures of OECD member states revealed a slight decrease.

Strategic Patenting

An explanation for this apparent paradox lies in a trend towards “strategic patenting”, where patent applications are motivated not by the purpose to protect a specific innovation, but by a desire to secure a market position against competitors.

A strategic patent or portfolio of patents can prevent a competitor from developing, manufacturing, offering and selling a similar product. It may also deter competitors from even entering the market.

In short, the role of IP management has changed from creating a legal barrier to prevent copying of innovations, thereby securing a return on investment, to a sophisticated utilisation of patents to achieve maximum strategic benefit and business competitiveness.

How to Handle a Growing Patent Portfolio

The drawback of strategic patenting is the resources needed to manage a complex portfolio. Quantity does not guarante equality; indeed the larger the portfolio, the more difficult it becomes to ensure that it is serving its strategic and economic purpose. When a patent portfolio becomes too large, individual patents and applications often cannot be managed efficiently.

However, methodologies and tools are available to support analysis, reporting and steering of complex portfolios. Performance indicators, such as patent strength, citation frequency, and age and country distribution, can be evaluated and interpreted to support strategic decisions. Specialised visualisation methods, for example patent landscaping, create transparency for non-IP professionals and help enable sound executive decisions.

Dennemeyer’s experience shows that the evaluation and interpretation of patent portfolios, including the generation of patent landscapes, requires a deep understanding of the technology, the patent portfolio and the competitive environment.

This article originally appeared in Raconteur Report on Intellectual Property, published in September 2015. Click here to read the full article.

If well executed, strategic intellectual property (IP) management can contribute to top-line results and also enhance the bottom line, says Sevim Süzeroglu-Melchiors, IP expert at Dennemeyer Consulting, an international IP management specialist.

Hans-Georg Greif, head of patents at RWE, adds: “In a joint project team with Dennemeyer Consulting, we developed our new patent strategy, organisation, processes, resources and basics for software tools. I am proud that our implemented patent competence centre passed several, even externally driven, assessments, with the result that our patent management is up to date with no need to improve further.”

Efficient IP management is important to handle the growing number of patents and trade marks, as companies are now filing more and more IP rights.

Patent Explosion

All major patent offices around the world are exposed to a patent explosion. Over the past five years, the number of patent applications filed globally has grown by 33.5 per cent. The trend is particularly dramatic in some commercially significant technologies. In computer technology, for example, the increase is 85 per cent.

On top of the increase in numbers is the complexity and intricacy of patents. In recent years, the growth in patent voluminosity has become extreme. For example, the European Patent Office received an application with 283 priorities, 80,259 sequences and an estimated 50,000 pages in a biotechnology application filed together with genetic sequence listings.

Paradoxically, this increase in patent activity does not seem to be the result of a boost in research and development spending. R&D expenditures of OECD member states revealed a slight decrease.

Strategic Patenting

An explanation for this apparent paradox lies in a trend towards “strategic patenting”, where patent applications are motivated not by the purpose to protect a specific innovation, but by a desire to secure a market position against competitors.

A strategic patent or portfolio of patents can prevent a competitor from developing, manufacturing, offering and selling a similar product. It may also deter competitors from even entering the market.

In short, the role of IP management has changed from creating a legal barrier to prevent copying of innovations, thereby securing a return on investment, to a sophisticated utilisation of patents to achieve maximum strategic benefit and business competitiveness.

How to Handle a Growing Patent Portfolio

The drawback of strategic patenting is the resources needed to manage a complex portfolio. Quantity does not guarante equality; indeed the larger the portfolio, the more difficult it becomes to ensure that it is serving its strategic and economic purpose. When a patent portfolio becomes too large, individual patents and applications often cannot be managed efficiently.

However, methodologies and tools are available to support analysis, reporting and steering of complex portfolios. Performance indicators, such as patent strength, citation frequency, and age and country distribution, can be evaluated and interpreted to support strategic decisions. Specialised visualisation methods, for example patent landscaping, create transparency for non-IP professionals and help enable sound executive decisions.

Dennemeyer’s experience shows that the evaluation and interpretation of patent portfolios, including the generation of patent landscapes, requires a deep understanding of the technology, the patent portfolio and the competitive environment.

This article originally appeared in Raconteur Report on Intellectual Property, published in September 2015. Click here to read the full article.

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Recent litigation has jolted the patent annuity world.

Frequently, annuity providers operate in a black box; what are the real annuity costs and are you receiving a fair price?

To bring greater transparency to the industry, Dennemeyer is hosting a webinar on August 26, 2015 at 12:00pm CDT - “Secret World of Patents: An expose of the opaque world of annuity economics.”

Patent benefits vs. the cost to maintain

Uncovering what the actual costs of patent maintenance is increasingly important as budgets get squeezed annually and transparency is stressed.

The estimated average lifespan of a U.S. patent is 11 years; a USPTO report stated that in FY2014, 50.7% of patents were renewed in the third stage (i.e. end of 11th year since patent issued). Though each patent is not too expensive to renew, when you take global maintenance of multiple patents into account, the cost to maintain a patent portfolio can grow exponentially.

Broadly, we understand that patents support and drive innovation, allow companies to gain a competitive edge, and bolster countries’ economies.

For example, a BIO report showed that over an “18-year time period [1996-2013] academic-industry patent licensing bolstered U.S. gross industry output by up to $1.18 trillion, U.S gross domestic product (GDP) by up to $518 billion, and supported up to 3,824,000 U.S. jobs.”

In 2012, the USPTO released a study that showed “IP-intensive industries accounted for about $5.06 trillion in value added, or 34.8 percent of U.S. gross domestic product (GDP), in 2010.”

These societal benefits from patents cannot be confused with the reality faced by the individual (corporate) patent holder and the cost-benefit analysis involved in portfolio management.

However, the balance of costs to benefits cannot be accurately analyzed when actual costs are obscured behind vague invoices. The annuity industry is under pressure to increase transparency.

This webinar will address the issues associated with industry transparency, although it will not discuss any particular litigation that has hit the legal blogs.

Accurate Analysis

This need for clarity is what drives the webinar, “Secret World of Patents: An expose of the opaque world of annuity economics,” on August 26, 2015, at 12:00 pm CDT. Come peel back the curtain and learn how to analyze annuity payments accurately to ensure you get the best value.

The webinar will not only aid in your budget analysis, but will help support an accurate cost-benefit portfolio analysis for future growth. Learn more about the webinar and register; space is limited.

Recent litigation has jolted the patent annuity world.

Frequently, annuity providers operate in a black box; what are the real annuity costs and are you receiving a fair price?

To bring greater transparency to the industry, Dennemeyer is hosting a webinar on August 26, 2015 at 12:00pm CDT - “Secret World of Patents: An expose of the opaque world of annuity economics.”

Patent benefits vs. the cost to maintain

Uncovering what the actual costs of patent maintenance is increasingly important as budgets get squeezed annually and transparency is stressed.

The estimated average lifespan of a U.S. patent is 11 years; a USPTO report stated that in FY2014, 50.7% of patents were renewed in the third stage (i.e. end of 11th year since patent issued). Though each patent is not too expensive to renew, when you take global maintenance of multiple patents into account, the cost to maintain a patent portfolio can grow exponentially.

Broadly, we understand that patents support and drive innovation, allow companies to gain a competitive edge, and bolster countries’ economies.

For example, a BIO report showed that over an “18-year time period [1996-2013] academic-industry patent licensing bolstered U.S. gross industry output by up to $1.18 trillion, U.S gross domestic product (GDP) by up to $518 billion, and supported up to 3,824,000 U.S. jobs.”

In 2012, the USPTO released a study that showed “IP-intensive industries accounted for about $5.06 trillion in value added, or 34.8 percent of U.S. gross domestic product (GDP), in 2010.”

These societal benefits from patents cannot be confused with the reality faced by the individual (corporate) patent holder and the cost-benefit analysis involved in portfolio management.

However, the balance of costs to benefits cannot be accurately analyzed when actual costs are obscured behind vague invoices. The annuity industry is under pressure to increase transparency.

This webinar will address the issues associated with industry transparency, although it will not discuss any particular litigation that has hit the legal blogs.

Accurate Analysis

This need for clarity is what drives the webinar, “Secret World of Patents: An expose of the opaque world of annuity economics,” on August 26, 2015, at 12:00 pm CDT. Come peel back the curtain and learn how to analyze annuity payments accurately to ensure you get the best value.

The webinar will not only aid in your budget analysis, but will help support an accurate cost-benefit portfolio analysis for future growth. Learn more about the webinar and register; space is limited.

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Recently, in a Report to Congress on trademark litigation tactics, the United States Patent and Trademark Office (“USPTO”) defined the amorphous term Trademark Bullying or Trademark Trolling as the vexatious practice of a “trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.” Mirroring the modus operandi exhibited by patent assertion entities and copyright bullies, several creative mark owners have adopted and modified this sue-to-settle paradigm and applied it in the trademark context. In short, trademark trolls—businesses both large and small—aggressively assert rights beyond the scope of trademark protection afforded by the Lanham Act through the issuance of threatening cease-and-desist letters.

When issuing a tenuous cease-and desist letter, it is common for these audacious entities to unreasonably interpret the Lanham Act by failing to conduct a comprehensive objective evaluation of the third party’s mark in relation to their delineated goods and services. Further, unreasonable interpretations may also include falsely aggrandizing the strength of the owner’s mark, exaggerating the mark’s scope of protection, or misrepresenting the likelihood of consumer confusion in the marketplace.

Further, examining the content of traditional demand letters, the sender will often attempt to force the target to cease using his or her own mark or face imminent litigation. Alternatively, others are issued in an effort to extract license payments, rapid settlements, or seek co-existence agreements from the alleged infringer. This litigious practice evinced by bullies occasionally results in filing infringement suits against arguable violators in an attempt to financially exhaust and deter that trademark holder from rightfully utilizing their registered trademark in commerce. However, the threat of litigation is typically sufficient economic pressure to force an individual or smaller business into compliance.

According to the 2013 American Intellectual Property Law Association (“AIPLA”) Report of the Economic Survey, trademark infringement litigation costs total on average as follows: $375,000 through trial when less than $1 million is at issue; $794,000 when $1-10 million is at issue; $1.4 million when $10-25 million is at issue; and $2 million in costs when the amount in controversy exceeds $25 million. Recognizing the tremendous value trademarks add to the U.S. economy, diligent and meritorious enforcement of trademark rights is critical to halt the disingenuous efforts of others attempting to unfairly trade off a mark owner’s established reputation.

It must be remembered that the line between trademark bullying and rightful enforcement practices is not always black and white. In light of the fact that mark owners are shouldered with the affirmative obligation to personally police violations of their intellectual property rights; aggressive enforcement campaigns do not necessarily rise to the level of abusive bullying tactics as previously described by the USPTO. By failing to control third party use, a mark owner’s rights may be substantially restricted. Refraining from enforcement measures may cause a likelihood of consumer confusion in the marketplace, lost profits, and harm to the rights holder’s goodwill. On some occasions, failing to police may even result in a loss of trademark protection entirely through genericide or abandonment. Thus, if the mark owner does not proactively enforce its rights against infringers, the owner’s ability to preclude others from using the mark in commerce and the value of that intangible asset will quickly erode.

Due to the fact that stronger marks are afforded an expanded scope of trademark protection, mark owners traditionally strive to enhance the strength of their mark. Accordingly, there is a strong incentive for mark owners to expand their rights through hyper-enforcement efforts. In the bullying context, these actors anticipate that the threat of costly, albeit unwarranted, litigation will intimidate alleged violators receiving demand letters into settlement instead of risking an uncertain trial. This concept of predation is a “wealth-maximizing strategy” not because the practice is inherently profitable, but because the profit resides in the actual threat of this predatory practice.

Ultimately, this deters market entry by others thus increasing long-term profits while enhancing the strength of the enforcer’s mark. Consequently, this practice imposes costs on society in the form of increased prices for products and services by reducing the number of legitimate competitors. For instance, a number of small business owners have conceded that they withdrew their trademark applications after receiving a cease-and-desist letter due to size and resource imbalances. As a result of bullying tactics, both the original policy-backed intentions codified by the framers in the Lanham Act and the balance between hypo- and hyper-enforcement have been patently disturbed.

Read the full article in the IP Watchdog magazine. For the full article, click here.

Recently, in a Report to Congress on trademark litigation tactics, the United States Patent and Trademark Office (“USPTO”) defined the amorphous term Trademark Bullying or Trademark Trolling as the vexatious practice of a “trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.” Mirroring the modus operandi exhibited by patent assertion entities and copyright bullies, several creative mark owners have adopted and modified this sue-to-settle paradigm and applied it in the trademark context. In short, trademark trolls—businesses both large and small—aggressively assert rights beyond the scope of trademark protection afforded by the Lanham Act through the issuance of threatening cease-and-desist letters.

When issuing a tenuous cease-and desist letter, it is common for these audacious entities to unreasonably interpret the Lanham Act by failing to conduct a comprehensive objective evaluation of the third party’s mark in relation to their delineated goods and services. Further, unreasonable interpretations may also include falsely aggrandizing the strength of the owner’s mark, exaggerating the mark’s scope of protection, or misrepresenting the likelihood of consumer confusion in the marketplace.

Further, examining the content of traditional demand letters, the sender will often attempt to force the target to cease using his or her own mark or face imminent litigation. Alternatively, others are issued in an effort to extract license payments, rapid settlements, or seek co-existence agreements from the alleged infringer. This litigious practice evinced by bullies occasionally results in filing infringement suits against arguable violators in an attempt to financially exhaust and deter that trademark holder from rightfully utilizing their registered trademark in commerce. However, the threat of litigation is typically sufficient economic pressure to force an individual or smaller business into compliance.

According to the 2013 American Intellectual Property Law Association (“AIPLA”) Report of the Economic Survey, trademark infringement litigation costs total on average as follows: $375,000 through trial when less than $1 million is at issue; $794,000 when $1-10 million is at issue; $1.4 million when $10-25 million is at issue; and $2 million in costs when the amount in controversy exceeds $25 million. Recognizing the tremendous value trademarks add to the U.S. economy, diligent and meritorious enforcement of trademark rights is critical to halt the disingenuous efforts of others attempting to unfairly trade off a mark owner’s established reputation.

It must be remembered that the line between trademark bullying and rightful enforcement practices is not always black and white. In light of the fact that mark owners are shouldered with the affirmative obligation to personally police violations of their intellectual property rights; aggressive enforcement campaigns do not necessarily rise to the level of abusive bullying tactics as previously described by the USPTO. By failing to control third party use, a mark owner’s rights may be substantially restricted. Refraining from enforcement measures may cause a likelihood of consumer confusion in the marketplace, lost profits, and harm to the rights holder’s goodwill. On some occasions, failing to police may even result in a loss of trademark protection entirely through genericide or abandonment. Thus, if the mark owner does not proactively enforce its rights against infringers, the owner’s ability to preclude others from using the mark in commerce and the value of that intangible asset will quickly erode.

Due to the fact that stronger marks are afforded an expanded scope of trademark protection, mark owners traditionally strive to enhance the strength of their mark. Accordingly, there is a strong incentive for mark owners to expand their rights through hyper-enforcement efforts. In the bullying context, these actors anticipate that the threat of costly, albeit unwarranted, litigation will intimidate alleged violators receiving demand letters into settlement instead of risking an uncertain trial. This concept of predation is a “wealth-maximizing strategy” not because the practice is inherently profitable, but because the profit resides in the actual threat of this predatory practice.

Ultimately, this deters market entry by others thus increasing long-term profits while enhancing the strength of the enforcer’s mark. Consequently, this practice imposes costs on society in the form of increased prices for products and services by reducing the number of legitimate competitors. For instance, a number of small business owners have conceded that they withdrew their trademark applications after receiving a cease-and-desist letter due to size and resource imbalances. As a result of bullying tactics, both the original policy-backed intentions codified by the framers in the Lanham Act and the balance between hypo- and hyper-enforcement have been patently disturbed.

Read the full article in the IP Watchdog magazine. For the full article, click here.

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Introduction

On 18 August 2014, the European Patent Office (EPO) in its capacity as receiving Office and International Searching Authority announced the launch of a new PCT service called "PCT Direct". This original PCT direct program continues to apply to international applications filed with the EPO as receiving Office as of 1 November 2014.

As of 1 July 2015, PCT applicants who selected the EPO as International Searching Authority are additionally able to use this service and submit PCT Direct letters irrespective of the chosen receiving Office.

Under PCT Direct, an applicant filing an international application claiming priority from an earlier application already searched by the EPO is able to react to any objections raised in the search opinion drawn up for the priority application. This new service is intended to simplify the assessment of the international application and to add to the value of the international search report and written opinion established by the EPO.

Requests for PCT Direct

Applicants may request to have their international application processed under PCT Direct by filing a letter ("PCT Direct letter") containing informal comments aimed at overcoming objections raised in the search opinion established by the EPO for the priority application. Such informal comments are to be understood as arguments regarding the patentability of the claims of the international application and also possibly as explanations regarding any modifications to the application documents, in particular to the claims, in comparison with the earlier application. PCT Direct letters will not form part of the international application.

For further details of the PCT Direct program at the EPO, please contact our attorneys at Dennemeyer & Associates.

Introduction

On 18 August 2014, the European Patent Office (EPO) in its capacity as receiving Office and International Searching Authority announced the launch of a new PCT service called "PCT Direct". This original PCT direct program continues to apply to international applications filed with the EPO as receiving Office as of 1 November 2014.

As of 1 July 2015, PCT applicants who selected the EPO as International Searching Authority are additionally able to use this service and submit PCT Direct letters irrespective of the chosen receiving Office.

Under PCT Direct, an applicant filing an international application claiming priority from an earlier application already searched by the EPO is able to react to any objections raised in the search opinion drawn up for the priority application. This new service is intended to simplify the assessment of the international application and to add to the value of the international search report and written opinion established by the EPO.

Requests for PCT Direct

Applicants may request to have their international application processed under PCT Direct by filing a letter ("PCT Direct letter") containing informal comments aimed at overcoming objections raised in the search opinion established by the EPO for the priority application. Such informal comments are to be understood as arguments regarding the patentability of the claims of the international application and also possibly as explanations regarding any modifications to the application documents, in particular to the claims, in comparison with the earlier application. PCT Direct letters will not form part of the international application.

For further details of the PCT Direct program at the EPO, please contact our attorneys at Dennemeyer & Associates.

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We are pleased to announce that Cary Levitt has joined as U.S. Chief Operating Officer. Mr. Levitt steers the development and implementation strategies to exploit Dennemeyer’s extensive IP services.

Mr. Levitt’s 30 years of legal experience centers in the corporate sector where he has been at the forefront of intellectual property changes. As Chief Intellectual Property Counsel at Dow Corning Corporation, Mr. Levitt led a global team of more than 25 employees. His team executed the global protection of trademarks and domain names; developed IP strategies; formed strategic alliances and partnerships, including IP licensing; and protected their IP, which included the preparation, prosecution, and enforcement of U.S. and foreign patents relating to Dow Corning’s diverse technologies and markets.

Previous to Dow Corning, Mr. Levitt served as corporate counsel at DuPont.  Today, he is a sought-after speaker on a variety of intellectual property topics. “There’s no one more qualified to run our U.S. operations then Cary. He’s one of the nation’s premier intellectual property lawyers with a wealth of industry knowledge,” states Leon Steinberg, Dennemeyer’s Managing Director of North America. “I first heard Cary speak at an AIPLA meeting in 2011 and was immediately impressed with his thoughtful and result-oriented approach.”

According to Mr. Levitt, “This is the perfect opportunity to combine my knowledge of intellectual property with my entrepreneurial interests. Dennemeyer is in a unique position to provide high-quality services with the individualized client attention of a smaller company, but with the resource support of a large international business.”

Recently, Mr. Levitt spoke at the Global Patent Strategy Exchange in Dublin, Ireland on June 10th.  His upcoming speaking engagements and other Dennemeyer events can be found at www.dennemeyer.com/events.

We are pleased to announce that Cary Levitt has joined as U.S. Chief Operating Officer. Mr. Levitt steers the development and implementation strategies to exploit Dennemeyer’s extensive IP services.

Mr. Levitt’s 30 years of legal experience centers in the corporate sector where he has been at the forefront of intellectual property changes. As Chief Intellectual Property Counsel at Dow Corning Corporation, Mr. Levitt led a global team of more than 25 employees. His team executed the global protection of trademarks and domain names; developed IP strategies; formed strategic alliances and partnerships, including IP licensing; and protected their IP, which included the preparation, prosecution, and enforcement of U.S. and foreign patents relating to Dow Corning’s diverse technologies and markets.

Previous to Dow Corning, Mr. Levitt served as corporate counsel at DuPont.  Today, he is a sought-after speaker on a variety of intellectual property topics. “There’s no one more qualified to run our U.S. operations then Cary. He’s one of the nation’s premier intellectual property lawyers with a wealth of industry knowledge,” states Leon Steinberg, Dennemeyer’s Managing Director of North America. “I first heard Cary speak at an AIPLA meeting in 2011 and was immediately impressed with his thoughtful and result-oriented approach.”

According to Mr. Levitt, “This is the perfect opportunity to combine my knowledge of intellectual property with my entrepreneurial interests. Dennemeyer is in a unique position to provide high-quality services with the individualized client attention of a smaller company, but with the resource support of a large international business.”

Recently, Mr. Levitt spoke at the Global Patent Strategy Exchange in Dublin, Ireland on June 10th.  His upcoming speaking engagements and other Dennemeyer events can be found at www.dennemeyer.com/events.

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Cases brought under US state right of publicity laws often draw on concepts in trademark and copyright law. Roxana Sullivan of Dennemeyer & Associates explains more.

The right of publicity, also called personality rights, prevents the unauthorised commercial use of a person’s likeness, name, or other recognisable aspect of his or her persona. As a result, it gives an individual the exclusive right to license the use of his or her identity for commercial gain. In the US, state law governs the right of publicity and only about half of the states have specific right of publicity statutes.

US courts have a long history of reviewing right of publicity cases in a variety of media, and over the years they have applied a variety of tests to balance publicity rights with the First Amendment (right of free speech). The only Supreme Court case to address that balance is Zacchini, which involved appropriation of the ‘Human Cannonball’ act created by the daredevil plaintiff . A news programme broadcast the entirety of Zacchini’s performance, thereby stripping him of the economic value that lay in it.

Over the years, right of publicity cases have extended beyond traditional media such as television, advertising, books, or comics. A more recent group of cases focusing on the use of plaintiffs’ likeness in video games has shifted right of publicity case law and the balancing test that courts apply.

This article will focus on the most recent three cases dealing with athletes depicted in sports video games. These cases, brought against Electronic Arts (EA) for allegedly violating the athletes’ right of publicity, have pushed and developed the balancing tests that courts use in such cases.

Read the full article in World IP Review - Annual Edition 2015: save as PDF, read online.

Cases brought under US state right of publicity laws often draw on concepts in trademark and copyright law. Roxana Sullivan of Dennemeyer & Associates explains more.

The right of publicity, also called personality rights, prevents the unauthorised commercial use of a person’s likeness, name, or other recognisable aspect of his or her persona. As a result, it gives an individual the exclusive right to license the use of his or her identity for commercial gain. In the US, state law governs the right of publicity and only about half of the states have specific right of publicity statutes.

US courts have a long history of reviewing right of publicity cases in a variety of media, and over the years they have applied a variety of tests to balance publicity rights with the First Amendment (right of free speech). The only Supreme Court case to address that balance is Zacchini, which involved appropriation of the ‘Human Cannonball’ act created by the daredevil plaintiff . A news programme broadcast the entirety of Zacchini’s performance, thereby stripping him of the economic value that lay in it.

Over the years, right of publicity cases have extended beyond traditional media such as television, advertising, books, or comics. A more recent group of cases focusing on the use of plaintiffs’ likeness in video games has shifted right of publicity case law and the balancing test that courts apply.

This article will focus on the most recent three cases dealing with athletes depicted in sports video games. These cases, brought against Electronic Arts (EA) for allegedly violating the athletes’ right of publicity, have pushed and developed the balancing tests that courts use in such cases.

Read the full article in World IP Review - Annual Edition 2015: save as PDF, read online.

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An increasing number of patent owners and companies would like to sell patents that are no longer of interest to them rather than abandon them. However, finding potential buyers can be difficult and time-consuming. To solve this problem, Dennemeyer developed a Monetization Service that provides our clients with easy access to the patent market. Now, the intellectual property community has recognized this service.

Acquisition International’s Intellectual Property Awards 2015 has honored Dennemeyer S.A. with the 2015 IP Innovation Award.

We are delighted to receive the 2015 IP Innovation Award,” says Dr. Malte Köllner, patent attorney from Dennemeyer’s Frankfurt office, who is heading the Monetization Service. “This recognition reflects our continued dedication to developing services to meet the needs of the IP industry. I am proud that our team’s hard work has distinguished itself.”

Our Monetization Service works as follows: it starts when Dennemeyer receives information about the patent(s); a patent number will suffice. This information is sent to selected external experts to perform an initial check on the assets’ sales potential. This check is free of charge and is not binding. If the feedback is positive, and after a service contract is signed, the patents will be offered to potential buyers. Only when a successful deal is closed, is a brokerage commission due.

The sales price of patent families is typically in the range of USD 10,000 to several million dollars, with an average around USD 300,000. However, the variability is large. The patent owner always remains in control over the selling price and to whom the patents are sold. When required, a license-back provision can be part of the sales contract.

For a successful sale, we have found that one should focus on patents and patent families with at  least one granted US patent. The second best option is a German or European patent. Also, the remaining lifetime of the patent should be at least a few years out and, if the patent of interest does belong to a patent family, the whole family should be offered. All these points will help increase the chance of a sale, though, in general, opportunities are still limited.  However, it is better to try to monetize rather than allowing the patent to lapse or become inactive.

Dennemeyer’s access to the major players in the patent market can help patent owners sell their patents. Dennemeyer annuity clients are automatically offered the Monetization Service at the time of patent renewal. All patent owners, regardless of current Dennemeyer affiliation, can take advantage of the Monetization Service.

An increasing number of patent owners and companies would like to sell patents that are no longer of interest to them rather than abandon them. However, finding potential buyers can be difficult and time-consuming. To solve this problem, Dennemeyer developed a Monetization Service that provides our clients with easy access to the patent market. Now, the intellectual property community has recognized this service.

Acquisition International’s Intellectual Property Awards 2015 has honored Dennemeyer S.A. with the 2015 IP Innovation Award.

We are delighted to receive the 2015 IP Innovation Award,” says Dr. Malte Köllner, patent attorney from Dennemeyer’s Frankfurt office, who is heading the Monetization Service. “This recognition reflects our continued dedication to developing services to meet the needs of the IP industry. I am proud that our team’s hard work has distinguished itself.”

Our Monetization Service works as follows: it starts when Dennemeyer receives information about the patent(s); a patent number will suffice. This information is sent to selected external experts to perform an initial check on the assets’ sales potential. This check is free of charge and is not binding. If the feedback is positive, and after a service contract is signed, the patents will be offered to potential buyers. Only when a successful deal is closed, is a brokerage commission due.

The sales price of patent families is typically in the range of USD 10,000 to several million dollars, with an average around USD 300,000. However, the variability is large. The patent owner always remains in control over the selling price and to whom the patents are sold. When required, a license-back provision can be part of the sales contract.

For a successful sale, we have found that one should focus on patents and patent families with at  least one granted US patent. The second best option is a German or European patent. Also, the remaining lifetime of the patent should be at least a few years out and, if the patent of interest does belong to a patent family, the whole family should be offered. All these points will help increase the chance of a sale, though, in general, opportunities are still limited.  However, it is better to try to monetize rather than allowing the patent to lapse or become inactive.

Dennemeyer’s access to the major players in the patent market can help patent owners sell their patents. Dennemeyer annuity clients are automatically offered the Monetization Service at the time of patent renewal. All patent owners, regardless of current Dennemeyer affiliation, can take advantage of the Monetization Service.

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On June 3 we met in New York to discuss IP issues and strategies.

On June 3 we met in New York to discuss IP issues and strategies.

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There seems to be an interesting patent category under the European Patent Convention (EPC), namely claims containing partial back-references.

In decision T81/14 of 12 March 2015, a Board of Appeal of the European Patent Office summarized its conclusion about use claims, which refer to the use of a product obtained according to a method claimed in a preceding claim, as follows:

“When considering the definition of a product in terms of its production process the principles developed in the jurisprudence for the ‘product-by-process claims’ are in general to be applied, also in the case of a claim directed to the use of that product (points 3.2 to 3.7).” (see Catchword)

In order to better understand the Board’s view, it is helpful to read the claim which led to the above conclusion:

"8. Use of the sintered cemented carbide body obtained according to the method of any one of claims 1 to 7 for the production of a cutting tool."

The Board interpreted this claim such that it comprises process and product features and is notionally equivalent to a claim directed to a process for the production of a cutting tool using the sintered cemented carbide body. The Board concluded from this interpretation that the steps of the method for the production of the sintered cemented carbide body do not form part of the claimed activity. In other words, the reference in claim 8 to the steps of the method for the production of the sintered cemented carbide body was considered not defining process features, but solely the features of the product, i.e. of the sintered body, used in the claimed method (see T 81/14, at no. 3.3 of the Reasons).

Hence, despite the explicit back-reference to “the method of any one of claims 1 to 7”, this back-reference did not incorporate all method steps into the use claim. This was because of the additional language “obtained by”. It could therefore be said that a back-reference can be limited; or partial.

There seems to be an interesting patent category under the European Patent Convention (EPC), namely claims containing partial back-references.

In decision T81/14 of 12 March 2015, a Board of Appeal of the European Patent Office summarized its conclusion about use claims, which refer to the use of a product obtained according to a method claimed in a preceding claim, as follows:

“When considering the definition of a product in terms of its production process the principles developed in the jurisprudence for the ‘product-by-process claims’ are in general to be applied, also in the case of a claim directed to the use of that product (points 3.2 to 3.7).” (see Catchword)

In order to better understand the Board’s view, it is helpful to read the claim which led to the above conclusion:

"8. Use of the sintered cemented carbide body obtained according to the method of any one of claims 1 to 7 for the production of a cutting tool."

The Board interpreted this claim such that it comprises process and product features and is notionally equivalent to a claim directed to a process for the production of a cutting tool using the sintered cemented carbide body. The Board concluded from this interpretation that the steps of the method for the production of the sintered cemented carbide body do not form part of the claimed activity. In other words, the reference in claim 8 to the steps of the method for the production of the sintered cemented carbide body was considered not defining process features, but solely the features of the product, i.e. of the sintered body, used in the claimed method (see T 81/14, at no. 3.3 of the Reasons).

Hence, despite the explicit back-reference to “the method of any one of claims 1 to 7”, this back-reference did not incorporate all method steps into the use claim. This was because of the additional language “obtained by”. It could therefore be said that a back-reference can be limited; or partial.

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From Board of Appeal 3.4.03 of the European Patent Office comes recent advice how the questions of sufficiency of disclosure, clarity of the claim language and (non)obviousness of the claimed subject matter shall be dealt with under the European Patent Convention - namely separately.

Below is the major issue underlying the Board’s decision (T 2001/12 of 29 Jan, 2015),

and therefore it becomes possible to realize a memory device which can reduce the voltage for writing and erasing to approximately 70% or less of the program voltage of a conventional planar type device.”

that was mentioned in the description, but was not comprised in the examined independent claim. The Board thus asked the question whether the allegation that the claimed invention is incapable of achieving the mentioned effect, would, even if true, justify refusing the application for failure to meet the requirements of a sufficient disclosure. In order to answer this question, the Board took a detailed look into the EPO’s case law and ultimately concluded that it is:

“…the consistent position of the boards that an objection of insufficient disclosure … cannot legitimately be based on an argument that the application would not enable a skilled person to achieve a non-claimed technical effect.” (at point 3.4 of the Reasons)

According to the Board, the question of sufficiency shall apparently be considered separately from the question of clarity because the Board further opines that if the claims do not comprise a feature which is described in the application as essential or which is disclosed in the description as being indispensable for solving the problem defined in the application, then a lack of clarity objection may indeed arise (see point 4.2 of the Reasons).

The assessment of clarity does however not entail, and is independent of, a comparison of the claimed invention with the prior art, other than to determine whether there is consistency between the claims and the description in relation to the believed contribution of the claimed invention to the art as described in the application (see also point 4.2 of the Reasons).

Moreover, the Board emphasizes that the determination of the objective contribution of the claimed invention is also to be made separately. It is neither related to sufficiency nor to clarity, but forms part of the examination for obviousness (see point 4.3 of the Reasons).

Decision T 2001/12 is therefore a reminder to all practitioners acting before and in the European Patent Office that the patentability requirements of sufficiency, clarity and non-obviousness are separate requirements. This should actually be evident already from the fact these requirements are laid down in different Articles of the European Patent Convention. However, in real life the patent examination under the Convention sometimes merges these requirements. The decision reported herein clearly warns against such an approach.

From Board of Appeal 3.4.03 of the European Patent Office comes recent advice how the questions of sufficiency of disclosure, clarity of the claim language and (non)obviousness of the claimed subject matter shall be dealt with under the European Patent Convention - namely separately.

Below is the major issue underlying the Board’s decision (T 2001/12 of 29 Jan, 2015),

and therefore it becomes possible to realize a memory device which can reduce the voltage for writing and erasing to approximately 70% or less of the program voltage of a conventional planar type device.”

that was mentioned in the description, but was not comprised in the examined independent claim. The Board thus asked the question whether the allegation that the claimed invention is incapable of achieving the mentioned effect, would, even if true, justify refusing the application for failure to meet the requirements of a sufficient disclosure. In order to answer this question, the Board took a detailed look into the EPO’s case law and ultimately concluded that it is:

“…the consistent position of the boards that an objection of insufficient disclosure … cannot legitimately be based on an argument that the application would not enable a skilled person to achieve a non-claimed technical effect.” (at point 3.4 of the Reasons)

According to the Board, the question of sufficiency shall apparently be considered separately from the question of clarity because the Board further opines that if the claims do not comprise a feature which is described in the application as essential or which is disclosed in the description as being indispensable for solving the problem defined in the application, then a lack of clarity objection may indeed arise (see point 4.2 of the Reasons).

The assessment of clarity does however not entail, and is independent of, a comparison of the claimed invention with the prior art, other than to determine whether there is consistency between the claims and the description in relation to the believed contribution of the claimed invention to the art as described in the application (see also point 4.2 of the Reasons).

Moreover, the Board emphasizes that the determination of the objective contribution of the claimed invention is also to be made separately. It is neither related to sufficiency nor to clarity, but forms part of the examination for obviousness (see point 4.3 of the Reasons).

Decision T 2001/12 is therefore a reminder to all practitioners acting before and in the European Patent Office that the patentability requirements of sufficiency, clarity and non-obviousness are separate requirements. This should actually be evident already from the fact these requirements are laid down in different Articles of the European Patent Convention. However, in real life the patent examination under the Convention sometimes merges these requirements. The decision reported herein clearly warns against such an approach.

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On 5 December 2014, the African Intellectual Property Organization (OAPI), comprising 17 African countries, has deposited its instrument of accession to join the Madrid Protocol, which will enter into force on 5 March 2015.

Thanks to the Madrid System, a brand owner may apply for trademark protection in multiple countries being parties to the system through one international application. This allows applicants to avoid filing a large quantity of national applications and at the same time facilitates time and cost savings.

OAPI’s Member States - Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, the Republic of Congo, Côte d'Ivoire, Gabon, Guinea, Equatorial Guinea, Mali, Mauritania, Niger, Guinea Bissau, Senegal and Togo - will provide its brand owners with easier access to trademark protection through one international application. It will equally enable international brand owners to cover 17 African countries with one single designation. This accession does not only benefit new trademark applications, but owners of existing registrations will also be able to extend the protection of their trademarks to OAPI.

Nevertheless, for the accession to take effect, OAPI needs to amend its national law to give effect to international registrations; otherwise, registrations designating OAPI will not be enforceable.

As there are no indications when the amendment is to take place, we currently do not recommend that brand owners rely solely on OAPI designation for trademark protection until further notice.

Our trademark attorneys at Dennemeyer & Associates are prepared to provide further advice or assist you in filing trademark applications in the OAPI region and other African countries. Contact us at: info@dennemeyer-law.com.

On 5 December 2014, the African Intellectual Property Organization (OAPI), comprising 17 African countries, has deposited its instrument of accession to join the Madrid Protocol, which will enter into force on 5 March 2015.

Thanks to the Madrid System, a brand owner may apply for trademark protection in multiple countries being parties to the system through one international application. This allows applicants to avoid filing a large quantity of national applications and at the same time facilitates time and cost savings.

OAPI’s Member States - Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, the Republic of Congo, Côte d'Ivoire, Gabon, Guinea, Equatorial Guinea, Mali, Mauritania, Niger, Guinea Bissau, Senegal and Togo - will provide its brand owners with easier access to trademark protection through one international application. It will equally enable international brand owners to cover 17 African countries with one single designation. This accession does not only benefit new trademark applications, but owners of existing registrations will also be able to extend the protection of their trademarks to OAPI.

Nevertheless, for the accession to take effect, OAPI needs to amend its national law to give effect to international registrations; otherwise, registrations designating OAPI will not be enforceable.

As there are no indications when the amendment is to take place, we currently do not recommend that brand owners rely solely on OAPI designation for trademark protection until further notice.

Our trademark attorneys at Dennemeyer & Associates are prepared to provide further advice or assist you in filing trademark applications in the OAPI region and other African countries. Contact us at: info@dennemeyer-law.com.

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The Chinese Trademark Office announced that as of January 1, 2015, it will now accept new services in subclass 3503 of class 35. Trademark owners may now finally protect services that include the “provision of online marketplace for buyers and sellers of goods or services”.

Although the terms “retail and wholesale services” still remain unacceptable in the same class, this is an important change in Chinese trademark law that has not previously recognized protection for any type of retail services. The fact that doors have been opened for “online retail and wholesale services” protection will be of significant importance to online retailer giants such as Amazon and eBay.

In light of these changes, we recommend clients and brand owners with an interest in online retail and wholesale services in China to consider seeking protection for additional applications to cover these important services.

Our trademark attorneys at Dennemeyer & Associates are prepared to provide further advice or assist you in filing trademark applications in China. Contact us at:info@dennemeyer-law.com.

The Chinese Trademark Office announced that as of January 1, 2015, it will now accept new services in subclass 3503 of class 35. Trademark owners may now finally protect services that include the “provision of online marketplace for buyers and sellers of goods or services”.

Although the terms “retail and wholesale services” still remain unacceptable in the same class, this is an important change in Chinese trademark law that has not previously recognized protection for any type of retail services. The fact that doors have been opened for “online retail and wholesale services” protection will be of significant importance to online retailer giants such as Amazon and eBay.

In light of these changes, we recommend clients and brand owners with an interest in online retail and wholesale services in China to consider seeking protection for additional applications to cover these important services.

Our trademark attorneys at Dennemeyer & Associates are prepared to provide further advice or assist you in filing trademark applications in China. Contact us at:info@dennemeyer-law.com.

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A revision of the patent prosecution system in New Zealand and Australia following recent changes in the two countries to modernize and harmonize their IP laws

A revision of the patent prosecution system in New Zealand and Australia following recent changes in the two countries to modernize and harmonize their IP laws

Patent laws in both Australia and New Zealand have undergone significant changes in recent years. The New Zealand changes are the most significant, with their 60 year-old Act completely replaced. All the regulatory detail has now emerged and attorneys, examiners, hearing officers and Commissioners on both sides of the Tasman Sea are gaining experience under the new regimes. It is therefore timely to briefly reflect on the main changes and their effect on patent prosecution down under.

In general terms, most of the changes aim to modernize and harmonize Australian and New Zealand laws with those of Europe and the United States.

Commencement
The “Raising the Bar” changes to the Australian Patents Act 1990 and associated regulations generally apply to patent applications in respect of which examination was requested from 15 April 2013. Not surprisingly, the pending changes caused a very significant spike in the number of requests for examination received by the Office in the lead up to this date.

The New Zealand Patents Act 2014 and associated regulations apply to applications filed (or Patent Cooperation Treaty national phases entered) from 13 September 2014. Applications under the new Act are easily identifiable from their application numbers, which start from 700,000. Somewhat unexpectedly, divisional applications filed from old Act applications can be antedated to proceed under the old Act.

Requirements
Entitlement: Getting entitlement correct remains as important as ever, in both countries. The formality requirements have, however, changed. In Australia, the requirement to file a notice of entitlement has been removed and replaced with a generic entitlement statement that the applicant must confirm when requesting examination. Conversely, the new Act in New Zealand expressly mandates a notice stating the grounds on which the applicant is entitled to be granted the patent, before acceptance.

Subject matter: In both Australia and New Zealand, the invention must be a “manner of manufacture”. Specific subject matter exclusions apply, such as human being and biological processes for their generation. In Australia, argument continues over the boundaries of the manner of manufacture requirement. At the time of writing, practitioners are digesting a recent decision on computer-implemented inventions, and the High Court will consider an application for special leave to appeal from a significant Full Federal Court decision on gene patenting.

In New Zealand, computer software, as such, is no longer patentable. The exclusion is intended to align New Zealand with the United Kingdom and the European Patent Convention.

To read the full article, please view the PDF attached (as published in The Patent Lawyer magazine).

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Spanish “Armada” sails through stormy weather as the Advocate General delivered his opinion on Spanish CJEU claims regarding European patent with unitary effect

On November 18, 2014 Advocate General Yves Bot delivered his opinion to dismiss the Spanish claims that challenge the legality of the unitary patent protection system.

As many of you already know, back in 2013 the Kingdom of Spain filed two legal actions before CJEU, namely C-146/13 disputing Council Regulation 1257/12 and C-147/13 against Council Regulation 1260/12.

The full text of the legal actions can be found on the CJEU (Curia) website at the following links:

http://curia.europa.eu/juris/liste.jsf?language=en&td=ALL&num=C-146/13
http://curia.europa.eu/juris/liste.jsf?language=en&td=ALL&num=C-147/13

To better understand Spain’s argument raised in the C-146/12, it is necessary to briefly touch upon the content of Council Regulation 1257/12 (on enhanced cooperation in the area of creation of the unitary patent protection system). It prescribes that European patents with unitary effect will have unitary protection in the territory of the participating Member States. Unitary protection of the patent is achieved by attributing unitary effect to European patents in the post-grant phase. Thus, it is expected that this unitary character of the patent will provide uniform protection and have equal effect in all participating Member States.

On the other hand, Spain wants to declare Council regulation 1257/12 legally non-existent and argues the following:

  • There is "breach of the values of the rule of law" as a regulation has been established on the basis of a right granted by the European Patent Office;
  • Lack of a legal basis for Regulation 1257/2012 in that it does not introduce measures guaranteeing the uniform protection;
  • Misuse of power through the use of enhanced cooperation for purposes other than those provided for in the Treaties;
  • Misapplication of the Meroni case law, in the regulation of the system for setting renewal fees and for determining the 'share of distribution' of those fees.
  • Misapplication of the Meroni case law, in the delegation to the EPO of administrative tasks relating to the European patent with unitary effect;
  • Breach of the principles of autonomy and uniformity, in regards to the rules governing the entry into force of Regulation 1257/2012.

Clearly not agreeing with the above, Advocate General delivered his opinion ultimately proposing that the CJEU should dismiss Spain’s legal actions.

In short, Advocate General responded to Spanish arguments by saying that the unitary patent protection provides a genuine benefit in terms of uniformity and integration, whilst the choice of languages will considerably reduce translation costs. In addition, ”the principle of legal certainty is undeniably better safeguarded when one language is authentic”. Also, Advocate General confirms the link between the unitary patent protection and the Unified Patent Court Agreement and concludes by saying that Signatory States are obliged by the principle of sincere cooperation to ratify the Unified Patent Court Agreement.

The whole opinion can be found on the CJEU (Curia) website (PDF).

As CJEU follows Advocate General’s opinion in almost 80% of cases, it is likely to expect that in the (near) future, presumably sometime in 2015, CJEU will follow the same reasoning when delivering its decision.

If Spain’s claims would be dismissed by the CJEU, there is no doubt that this would be a major step toward the creation of the unitary patent protection system and offer a clear green light to Signatory States to finalize their ratification processes (and a huge blow to Spanish ”Armada”).

As a final remark, the unitary patent will be available once 13 Member States including the UK, France and Germany have ratified the UPC agreement. So far, five Member States have ratified the UPC agreement.

The current status of the ratification process can be found on the European Commission website.

If you are interested to learn more about the European patent with unitary effect and the Unified Patent Court as well as new developments in this field, please contact the author at thadzija@dennemeyer-law.com.

Spanish “Armada” sails through stormy weather as the Advocate General delivered his opinion on Spanish CJEU claims regarding European patent with unitary effect

On November 18, 2014 Advocate General Yves Bot delivered his opinion to dismiss the Spanish claims that challenge the legality of the unitary patent protection system.

As many of you already know, back in 2013 the Kingdom of Spain filed two legal actions before CJEU, namely C-146/13 disputing Council Regulation 1257/12 and C-147/13 against Council Regulation 1260/12.

The full text of the legal actions can be found on the CJEU (Curia) website at the following links:

http://curia.europa.eu/juris/liste.jsf?language=en&td=ALL&num=C-146/13
http://curia.europa.eu/juris/liste.jsf?language=en&td=ALL&num=C-147/13

To better understand Spain’s argument raised in the C-146/12, it is necessary to briefly touch upon the content of Council Regulation 1257/12 (on enhanced cooperation in the area of creation of the unitary patent protection system). It prescribes that European patents with unitary effect will have unitary protection in the territory of the participating Member States. Unitary protection of the patent is achieved by attributing unitary effect to European patents in the post-grant phase. Thus, it is expected that this unitary character of the patent will provide uniform protection and have equal effect in all participating Member States.

On the other hand, Spain wants to declare Council regulation 1257/12 legally non-existent and argues the following:

  • There is "breach of the values of the rule of law" as a regulation has been established on the basis of a right granted by the European Patent Office;
  • Lack of a legal basis for Regulation 1257/2012 in that it does not introduce measures guaranteeing the uniform protection;
  • Misuse of power through the use of enhanced cooperation for purposes other than those provided for in the Treaties;
  • Misapplication of the Meroni case law, in the regulation of the system for setting renewal fees and for determining the 'share of distribution' of those fees.
  • Misapplication of the Meroni case law, in the delegation to the EPO of administrative tasks relating to the European patent with unitary effect;
  • Breach of the principles of autonomy and uniformity, in regards to the rules governing the entry into force of Regulation 1257/2012.

Clearly not agreeing with the above, Advocate General delivered his opinion ultimately proposing that the CJEU should dismiss Spain’s legal actions.

In short, Advocate General responded to Spanish arguments by saying that the unitary patent protection provides a genuine benefit in terms of uniformity and integration, whilst the choice of languages will considerably reduce translation costs. In addition, ”the principle of legal certainty is undeniably better safeguarded when one language is authentic”. Also, Advocate General confirms the link between the unitary patent protection and the Unified Patent Court Agreement and concludes by saying that Signatory States are obliged by the principle of sincere cooperation to ratify the Unified Patent Court Agreement.

The whole opinion can be found on the CJEU (Curia) website (PDF).

As CJEU follows Advocate General’s opinion in almost 80% of cases, it is likely to expect that in the (near) future, presumably sometime in 2015, CJEU will follow the same reasoning when delivering its decision.

If Spain’s claims would be dismissed by the CJEU, there is no doubt that this would be a major step toward the creation of the unitary patent protection system and offer a clear green light to Signatory States to finalize their ratification processes (and a huge blow to Spanish ”Armada”).

As a final remark, the unitary patent will be available once 13 Member States including the UK, France and Germany have ratified the UPC agreement. So far, five Member States have ratified the UPC agreement.

The current status of the ratification process can be found on the European Commission website.

If you are interested to learn more about the European patent with unitary effect and the Unified Patent Court as well as new developments in this field, please contact the author at thadzija@dennemeyer-law.com.

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Patent owners in the Gulf region are well aware of the pros, but also of the few deficiencies of the current local patent systems. One of these less desired effects is the long timeframe usually elapsing between application, examination, and grant that can easily take up several years. To a certain extent, this may be attributed to the practice of outsourcing the substantial examination to foreign Offices (such as the Austrian or Chinese PTO); or, on the other hand, to the rather fresh-faced experience of the local examiners.

However, the repeatedly announced determination of the GCC member states to foster innovation - accompanied by million-dollar R&D programs and state aids granted to innovators - finally bears its fruits. Recently, three out of the seven GCC PTOs have introduced some of the improvements the patent community has long been waiting for:

  • GCC has increased its number of examiners by 50%. The goal is to handle all examinations in-house in the near future and to reduce the time from application to grant to an initial maximum of three years.
  • Oman has started substantive examination (as of now, regarding patent applications filed between 2003 and 2007) after having engaged the Egyptian Patent Office to lend a hand. The examination fees for the said pending applications are due within two months from the publication of the new Regulation (on the 2nd of November 2014). Non-payment will lead to the lapse of the respective applications.
  • UAE has started to intensify its substantive examination (regarding all patent applications filed since 2008) after having invited examiners from the Korean Patent Office to share their experience and transfer their know-how.

The examination fees for applications filed in the triennium 2011 - 2013 are due within 90 days from the publication of the new Regulation (on the 26th of October 2014). Again, non-paid rights shall be deemed lapsed. Moreover, for all new applications filed since 1st of November 2014, the examination fee is due together with the application fee, or at the latest within 90 days thereafter.

Consequently, patent owners are requested to pay the concerned examination fees in Oman before January 4, 2015 and in the UAE by January 25, 2015, respectively.

All eyes are now on Bahrain, Kuwait, and Qatar to see if and how they will draw level. Specifically, Kuwait could well move ahead by becoming the latest PCT member (after Saudi Arabia and Iran in 2013), which would also enable the GCC Office to follow suit.

Thus, with the new governmental initiatives, may the Arab IP season continue...

Dennemeyer’s Dubai Office is accredited to represent clients before the UAE and GCC PTOs. Please contact Jan Wrede at jwrede@dennemeyer-law.com or +971 (0) 4430 3943 for any further information or assistance you may require.

Patent owners in the Gulf region are well aware of the pros, but also of the few deficiencies of the current local patent systems. One of these less desired effects is the long timeframe usually elapsing between application, examination, and grant that can easily take up several years. To a certain extent, this may be attributed to the practice of outsourcing the substantial examination to foreign Offices (such as the Austrian or Chinese PTO); or, on the other hand, to the rather fresh-faced experience of the local examiners.

However, the repeatedly announced determination of the GCC member states to foster innovation - accompanied by million-dollar R&D programs and state aids granted to innovators - finally bears its fruits. Recently, three out of the seven GCC PTOs have introduced some of the improvements the patent community has long been waiting for:

  • GCC has increased its number of examiners by 50%. The goal is to handle all examinations in-house in the near future and to reduce the time from application to grant to an initial maximum of three years.
  • Oman has started substantive examination (as of now, regarding patent applications filed between 2003 and 2007) after having engaged the Egyptian Patent Office to lend a hand. The examination fees for the said pending applications are due within two months from the publication of the new Regulation (on the 2nd of November 2014). Non-payment will lead to the lapse of the respective applications.
  • UAE has started to intensify its substantive examination (regarding all patent applications filed since 2008) after having invited examiners from the Korean Patent Office to share their experience and transfer their know-how.

The examination fees for applications filed in the triennium 2011 - 2013 are due within 90 days from the publication of the new Regulation (on the 26th of October 2014). Again, non-paid rights shall be deemed lapsed. Moreover, for all new applications filed since 1st of November 2014, the examination fee is due together with the application fee, or at the latest within 90 days thereafter.

Consequently, patent owners are requested to pay the concerned examination fees in Oman before January 4, 2015 and in the UAE by January 25, 2015, respectively.

All eyes are now on Bahrain, Kuwait, and Qatar to see if and how they will draw level. Specifically, Kuwait could well move ahead by becoming the latest PCT member (after Saudi Arabia and Iran in 2013), which would also enable the GCC Office to follow suit.

Thus, with the new governmental initiatives, may the Arab IP season continue...

Dennemeyer’s Dubai Office is accredited to represent clients before the UAE and GCC PTOs. Please contact Jan Wrede at jwrede@dennemeyer-law.com or +971 (0) 4430 3943 for any further information or assistance you may require.

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Dennemeyer Group is pleased to announce that the internationally well-known German and European Patent Attorney Mr. Paul-Alexander Wacker will join Dennemeyer on January 1, 2015 as “Of Counsel” consultant and advisor. With Mr. Wacker’s support, we are confident that Dennemeyer will be able to further increase its footprint in the local and international markets.

Mr. Wacker established the renowned German IP law firm Kuhnen & Wacker in Freising, in the proximity of Munich in 1975 as a co-founding member. His long-standing experience beyond a wide area of IP aspects has been sought by prominent clients worldwide and even since 2013, when he became “of counsel” to the firm.

Due to his broad education in electrical engineering, economics and law, Mr. Wacker successfully represented companies of all sizes and business types, from large and medium-sized corporations to individual inventors and universities, with noted contributions in patent and trademark prosecution, litigation and mediation cases. Additionally, he advises his clients in creating and attaining a more cost efficient and sustainable use of their IP portfolios through IP strategy optimization, valuation, licensing, M&As and other commercial matters.

Paul-Alexander Wacker lectures at the Technical University of Munich and often at IP conferences, seminars and universities in Germany and abroad and has authored several books and publications on topics related to IP management and economics. He is a member of various IP associations and has been serving for many years as Chairman and now as Vice-Chairman of the Committee for Innovation and Technology in the Advisory Council for Economics to the Bavarian Government. Mr. Wacker is an expert for patent law revision in the Legal Committee of the German Government and for innovation in medical devices for the Ministries of Health, Research and Economics.

Commenting on Mr. Wacker’s appointment at Dennemeyer, Dr. Robert Fichter, Director of Dennemeyer & Associates, noted: “We are extremely proud to welcome Mr. Wacker to Dennemeyer. His depth and breadth of expertise across the IP field will allow us to expand the range of IP matters we can cover for our clients’ benefit.

Mr. Wacker speaks German, English and has working knowledge of French and Japanese. For any inquiries, please contact Mr. Wacker at pwacker@dennemeyer.com.

Dennemeyer Group is pleased to announce that the internationally well-known German and European Patent Attorney Mr. Paul-Alexander Wacker will join Dennemeyer on January 1, 2015 as “Of Counsel” consultant and advisor. With Mr. Wacker’s support, we are confident that Dennemeyer will be able to further increase its footprint in the local and international markets.

Mr. Wacker established the renowned German IP law firm Kuhnen & Wacker in Freising, in the proximity of Munich in 1975 as a co-founding member. His long-standing experience beyond a wide area of IP aspects has been sought by prominent clients worldwide and even since 2013, when he became “of counsel” to the firm.

Due to his broad education in electrical engineering, economics and law, Mr. Wacker successfully represented companies of all sizes and business types, from large and medium-sized corporations to individual inventors and universities, with noted contributions in patent and trademark prosecution, litigation and mediation cases. Additionally, he advises his clients in creating and attaining a more cost efficient and sustainable use of their IP portfolios through IP strategy optimization, valuation, licensing, M&As and other commercial matters.

Paul-Alexander Wacker lectures at the Technical University of Munich and often at IP conferences, seminars and universities in Germany and abroad and has authored several books and publications on topics related to IP management and economics. He is a member of various IP associations and has been serving for many years as Chairman and now as Vice-Chairman of the Committee for Innovation and Technology in the Advisory Council for Economics to the Bavarian Government. Mr. Wacker is an expert for patent law revision in the Legal Committee of the German Government and for innovation in medical devices for the Ministries of Health, Research and Economics.

Commenting on Mr. Wacker’s appointment at Dennemeyer, Dr. Robert Fichter, Director of Dennemeyer & Associates, noted: “We are extremely proud to welcome Mr. Wacker to Dennemeyer. His depth and breadth of expertise across the IP field will allow us to expand the range of IP matters we can cover for our clients’ benefit.

Mr. Wacker speaks German, English and has working knowledge of French and Japanese. For any inquiries, please contact Mr. Wacker at pwacker@dennemeyer.com.

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Two sides of the entreprenorial coin

In this article, we take a look at how start-ups can safeguard their brands and how venture capitalists can best protect their investments with a good IP strategy.

For both sides of the entrepreneurial coin, start-up companies and venture capitalists (VCs), due diligence is a key component. Due diligence is a company investigation conducted any time a company is acquired, an investor plans to invest in a company,  venture financing is considered, or an initial public off€ering is made. Below, we focus on IP considerations that VCs need to take into account when performing due diligence and what start-ups need to examine to position themselves for investment.

A review of IP assets should be taken by all start-ups, regardless of the type of IP assets they own. For example, companies in the pharmaceutical, medical device or biotechnology fields regularly protect assets with patents or trade secrets and develop valuable trademarks as they go to market. For other start-ups, such as web-based technologies focused on user experience, patents can be less important than strong copyright and trademark portfolios. In either case, it’s in the best interest of the start-up and the VC firm to examine the IP portfolio as a whole.

Due diligence

There are four main factors a VC firm needs to consider when performing due diligence. First, it’s important for a VC firm to verify that all IP assets have been assigned to the company and to review any licence agreements concerning the IP. If the chain of title regarding the IP in question is messy, then the valuation, and later monetisation process, will prove to be complicated at best. VCs should examine the agreements in place to ensure that employment and consulting agreements establish IP ownership in the  start-up. An examination of the start-up’s licence agreements can also help estimate future royalty obligations.

Second, VCs should consider the measures taken to protect the IP. Have proper forms been led for patent, trademark, and/or copyright protection? Was an attorney used to prepare and file these forms? Have maintenance fees been duly paid on the IP assets?

Third, examine the company’s trade secret protection measures. Have non-disclosure agreements been utilised if the start-up worked with outside companies or individuals to develop the technology? What other systems are in place to ensure that proprietary information stays protected?

Finally, VCs must identify competing third-party technology and whether any claims exist against the company’s IP. This analysis is used to determine if there are third-party patents that could block the technology in which the VC firm is interested in investing. It can also determine if infringement actions are likely in the future.

Read the full article in the World Intellectual Property Review magazine - November/December 2014 issue - PDF article attached.

Two sides of the entreprenorial coin

In this article, we take a look at how start-ups can safeguard their brands and how venture capitalists can best protect their investments with a good IP strategy.

For both sides of the entrepreneurial coin, start-up companies and venture capitalists (VCs), due diligence is a key component. Due diligence is a company investigation conducted any time a company is acquired, an investor plans to invest in a company,  venture financing is considered, or an initial public off€ering is made. Below, we focus on IP considerations that VCs need to take into account when performing due diligence and what start-ups need to examine to position themselves for investment.

A review of IP assets should be taken by all start-ups, regardless of the type of IP assets they own. For example, companies in the pharmaceutical, medical device or biotechnology fields regularly protect assets with patents or trade secrets and develop valuable trademarks as they go to market. For other start-ups, such as web-based technologies focused on user experience, patents can be less important than strong copyright and trademark portfolios. In either case, it’s in the best interest of the start-up and the VC firm to examine the IP portfolio as a whole.

Due diligence

There are four main factors a VC firm needs to consider when performing due diligence. First, it’s important for a VC firm to verify that all IP assets have been assigned to the company and to review any licence agreements concerning the IP. If the chain of title regarding the IP in question is messy, then the valuation, and later monetisation process, will prove to be complicated at best. VCs should examine the agreements in place to ensure that employment and consulting agreements establish IP ownership in the  start-up. An examination of the start-up’s licence agreements can also help estimate future royalty obligations.

Second, VCs should consider the measures taken to protect the IP. Have proper forms been led for patent, trademark, and/or copyright protection? Was an attorney used to prepare and file these forms? Have maintenance fees been duly paid on the IP assets?

Third, examine the company’s trade secret protection measures. Have non-disclosure agreements been utilised if the start-up worked with outside companies or individuals to develop the technology? What other systems are in place to ensure that proprietary information stays protected?

Finally, VCs must identify competing third-party technology and whether any claims exist against the company’s IP. This analysis is used to determine if there are third-party patents that could block the technology in which the VC firm is interested in investing. It can also determine if infringement actions are likely in the future.

Read the full article in the World Intellectual Property Review magazine - November/December 2014 issue - PDF article attached.

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This article examines the new opposition system and how it associates with the Japanese invalidation trial system. A post-grant opposition system previously existed in Japan, but was abolished in 2003 to unify the nullity system into invalidation trials. Recently, it has been decided that a post-grant opposition system reflecting the demands of users be re-introduced and will be put in force in 2015. The exact date of implementation has not yet been fixed. As a result of re-introducing the opposition system, the provisions relating to invalidation trials before the board of appeal of the Japan Patent Office (JPO) will also be revised.

Who can file an opposition?

In the current invalidation trial system, anyone, even a non-interested party, can file an opposition. Therefore, when you do not want to disclose your name as an opponent, you can ask someone else to file an opposition. Substantial anonymous oppositions are possible.

In contrast, after the opposition system is in force, invalidation trials that currently may be filed by anyone, even a non-interested party, will be limited to interested parties only.

When can oppositions be filed?

An opposition can be filed within six months from the date when the patent publication is issued. Even within this six-month period, it is not permissible to change or add grounds for the opposition after the opposition division has issued a notice of the reasons for the revocation of a patent to the proprietor. Therefore, it is advisable to prepare the grounds and/or evidence for the opposition well in advance of filing the opposition. Invalidation trials can be filed any time after the patent is granted, even after it expires.

What is the cost for filing an opposition?

An opposition can be filed for each claim. The official fee for filing an opposition is JPY 16,500 ($145) + (JPY 2400 ($21) x number of claims). On the other hand, the official fee for filing an invalidation trial in front of the JPO’s board of appeal is JPY 49,500 ($435) + (JPY 5500 ($48) x number of claims). The fee for the opposition is clearly less than the fee for filing an invalidation trial.

Grounds for filing an opposition

The opposition may be filed on the grounds that:

  • The subject matter of the granted patent extends beyond the content of the application as filed;
  • The patent is not patentable under Articles 25 (enjoyment of rights by foreign nationals), 29 (industrial applicability, novelty and inventive step), 29(2) (novelty; prior rights), 32 (liable to injure public order, morality or public health) and 39 (prior application);
  • The patent has been granted in violation of a treaty;
  • The patent does not comply with Article 36(4)(i) (enablement requirements) or Article36(6) (description requirements); and
  • Where matters stated in the specification, which is the translation of a foreign application, are not within the scope of matters stated in original foreign applications.

The grounds that the patent has been granted for the non-entitled person or granted in noncompliance with the requirements for joint application are not grounds for opposition, though they are grounds for invalidation trials.

Read the full article in the IPProTheInternet magazine - issue 54 - PDF article attached. View the full online IP Pro edition 54 here.

This article examines the new opposition system and how it associates with the Japanese invalidation trial system. A post-grant opposition system previously existed in Japan, but was abolished in 2003 to unify the nullity system into invalidation trials. Recently, it has been decided that a post-grant opposition system reflecting the demands of users be re-introduced and will be put in force in 2015. The exact date of implementation has not yet been fixed. As a result of re-introducing the opposition system, the provisions relating to invalidation trials before the board of appeal of the Japan Patent Office (JPO) will also be revised.

Who can file an opposition?

In the current invalidation trial system, anyone, even a non-interested party, can file an opposition. Therefore, when you do not want to disclose your name as an opponent, you can ask someone else to file an opposition. Substantial anonymous oppositions are possible.

In contrast, after the opposition system is in force, invalidation trials that currently may be filed by anyone, even a non-interested party, will be limited to interested parties only.

When can oppositions be filed?

An opposition can be filed within six months from the date when the patent publication is issued. Even within this six-month period, it is not permissible to change or add grounds for the opposition after the opposition division has issued a notice of the reasons for the revocation of a patent to the proprietor. Therefore, it is advisable to prepare the grounds and/or evidence for the opposition well in advance of filing the opposition. Invalidation trials can be filed any time after the patent is granted, even after it expires.

What is the cost for filing an opposition?

An opposition can be filed for each claim. The official fee for filing an opposition is JPY 16,500 ($145) + (JPY 2400 ($21) x number of claims). On the other hand, the official fee for filing an invalidation trial in front of the JPO’s board of appeal is JPY 49,500 ($435) + (JPY 5500 ($48) x number of claims). The fee for the opposition is clearly less than the fee for filing an invalidation trial.

Grounds for filing an opposition

The opposition may be filed on the grounds that:

  • The subject matter of the granted patent extends beyond the content of the application as filed;
  • The patent is not patentable under Articles 25 (enjoyment of rights by foreign nationals), 29 (industrial applicability, novelty and inventive step), 29(2) (novelty; prior rights), 32 (liable to injure public order, morality or public health) and 39 (prior application);
  • The patent has been granted in violation of a treaty;
  • The patent does not comply with Article 36(4)(i) (enablement requirements) or Article36(6) (description requirements); and
  • Where matters stated in the specification, which is the translation of a foreign application, are not within the scope of matters stated in original foreign applications.

The grounds that the patent has been granted for the non-entitled person or granted in noncompliance with the requirements for joint application are not grounds for opposition, though they are grounds for invalidation trials.

Read the full article in the IPProTheInternet magazine - issue 54 - PDF article attached. View the full online IP Pro edition 54 here.

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Dennemeyer is pleased to announce that Mr. Marco Smit has recently joined our team of practitioners in Frankfurt. He will focus on handling patent prosecution work and advising clients in respect to our new Monetization Service. As a Dutch Patent Attorney, he will also be providing support in relation to Dutch patent cases or Dutch customers, enabling Dennemeyer to handle more cases in-house.

Marco holds a Master of Science degree from the Eindhoven Technical University, where he studied Applied Physics with a focus on solid state physics. Additionally, he earned a Master’s degree in Business Administration.

After his University studies, Marco worked for over five  years at KPN, the Dutch incumbent telecom provider, first as a researcher, then as a project manager and business consultant. During the next five years he worked in the field of Sustainable Development.

In 2009, he decided to return to the forefront of technology and started the training program to become a patent attorney. In 2011, he became a qualified Dutch patent attorney and in 2013 he became a qualified European Patent Attorney. Before joining Dennemeyer, he worked at two well-established IP law firms in The Netherlands, where he handled patent drafting and prosecution and managed communication with foreign agents. He advised many companies and inventors about protecting their inventions in countries all around the world. His areas of expertise include lithography, mechanics, optics, software and telecommunication.

Dr. Robert Fichter, Director of Dennemeyer & Associates, noted “With his Dutch background and business experience in the international context, Marco brings an infusion of expertise to our firm, whose mission is to be able to offer direct support to clients in an increasing number of jurisdictions. He is a valuable addition to our firm and we welcome him to the team!“.

Marco is fluent in Dutch and English, speaks German and has basic knowledge of French and Spanish. For any inquiries, please contact Marco at msmit@dennemeyer-law.com or +49 69 695960-0.

Dennemeyer is pleased to announce that Mr. Marco Smit has recently joined our team of practitioners in Frankfurt. He will focus on handling patent prosecution work and advising clients in respect to our new Monetization Service. As a Dutch Patent Attorney, he will also be providing support in relation to Dutch patent cases or Dutch customers, enabling Dennemeyer to handle more cases in-house.

Marco holds a Master of Science degree from the Eindhoven Technical University, where he studied Applied Physics with a focus on solid state physics. Additionally, he earned a Master’s degree in Business Administration.

After his University studies, Marco worked for over five  years at KPN, the Dutch incumbent telecom provider, first as a researcher, then as a project manager and business consultant. During the next five years he worked in the field of Sustainable Development.

In 2009, he decided to return to the forefront of technology and started the training program to become a patent attorney. In 2011, he became a qualified Dutch patent attorney and in 2013 he became a qualified European Patent Attorney. Before joining Dennemeyer, he worked at two well-established IP law firms in The Netherlands, where he handled patent drafting and prosecution and managed communication with foreign agents. He advised many companies and inventors about protecting their inventions in countries all around the world. His areas of expertise include lithography, mechanics, optics, software and telecommunication.

Dr. Robert Fichter, Director of Dennemeyer & Associates, noted “With his Dutch background and business experience in the international context, Marco brings an infusion of expertise to our firm, whose mission is to be able to offer direct support to clients in an increasing number of jurisdictions. He is a valuable addition to our firm and we welcome him to the team!“.

Marco is fluent in Dutch and English, speaks German and has basic knowledge of French and Spanish. For any inquiries, please contact Marco at msmit@dennemeyer-law.com or +49 69 695960-0.

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Dennemeyer is pleased to announce the launch of a new patent monetization service aimed at facilitating transactions for patent owners who wish to sell their patents.

Patent owners with patents that are no longer relevant for their own business can benefit from selling parts of their IP portfolio to another interested party instead of abandoning them. Through its new service, Dennemeyer will help clients to identify potentially valuable patents, put them on the market and increase the chances for selling them.

As a global IP service provider, Dennemeyer has access to the major players in the patent market and can, together with these parties, assess the market potential and connect buyers and sellers, smoothing the way for successful deals.

Patent annuities clients of Dennemeyer are in an ideal position to opt for this service at the time of the renewal of their patents, by making use of the corresponding option, integrated into Dennemeyer’s regular annuity reminder e-mails, and on the annuities portal where clients can explicitly express their interest in using our monetization service for selling the respective patent.

Patent attorney Dr. Malte Köllner, who is heading the Monetization service, commented: “We found that many companies lack the resources needed to find potential buyers for the patents they want to sell. We are happy to be able to address this challenge by putting our Monetization service to the use of our clients.”

Interested in learning more about our monetization service? Visit the dedicated webpage or contact Dr. Köllner at monetization@dennemeyer.com or +49 (0) 69 69 59 60-0 to find out how we can help you better monetize your patents. Alternatively, please use the contact form to request more information.

Dennemeyer is pleased to announce the launch of a new patent monetization service aimed at facilitating transactions for patent owners who wish to sell their patents.

Patent owners with patents that are no longer relevant for their own business can benefit from selling parts of their IP portfolio to another interested party instead of abandoning them. Through its new service, Dennemeyer will help clients to identify potentially valuable patents, put them on the market and increase the chances for selling them.

As a global IP service provider, Dennemeyer has access to the major players in the patent market and can, together with these parties, assess the market potential and connect buyers and sellers, smoothing the way for successful deals.

Patent annuities clients of Dennemeyer are in an ideal position to opt for this service at the time of the renewal of their patents, by making use of the corresponding option, integrated into Dennemeyer’s regular annuity reminder e-mails, and on the annuities portal where clients can explicitly express their interest in using our monetization service for selling the respective patent.

Patent attorney Dr. Malte Köllner, who is heading the Monetization service, commented: “We found that many companies lack the resources needed to find potential buyers for the patents they want to sell. We are happy to be able to address this challenge by putting our Monetization service to the use of our clients.”

Interested in learning more about our monetization service? Visit the dedicated webpage or contact Dr. Köllner at monetization@dennemeyer.com or +49 (0) 69 69 59 60-0 to find out how we can help you better monetize your patents. Alternatively, please use the contact form to request more information.

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As temperatures have started to drop across the U.S., IP matters remain heated. Below is a recap of key highlights in U.S. intellectual property.

United States Patent and Trademark Office

New Director of USPTO nominated

Michelle K. Lee was formally nominated as the next Under Secretary for Intellectual Property and Director of the U.S. Patent and Trademark Office; she has been serving as Deputy Director since January 2014. She will be the first woman to be permanent director of the USPTO.

Michelle Lee’s first public speech post-nomination was as the opening speaker for the AIPLA (American Intellectual Property Law Association) Annual Meeting in Washington D.C. A recap of this speech is provided by the IAM blog. Of interest is her assertion of continued support for congressional patent reform agenda.

New Informational Resources

The USPTO has made available new informational resources, called “toolkits”, in regards to common questions on trademark and patent litigation. This webpage is especially important for small businesses and sole properties that receive cease and desist letters and are unclear on next steps.  To view this information, go to the USPTO website.

Copyrights in the Spotlight

While patents continue to draw high profile coverage in major newspapers and magazines, copyright took the spotlight in a New Yorker article that asked, “Are copyright laws too strict?” This article takes a deep look at the myriad of copyright issues as well as the history of copyright in the U.S. A key point made by the author, Louis Menand, is that “The problem is that the judicial record is inconsistent” and “Judicial unpredictability makes for legal anxiety.” Read the full article on The New Yorker website. Let us know your thoughts on Twitter, @Dennemeyer.

Trans-Pacific Partnership, IP Chapter

On October 16, 2014, WikiLeaks released a second leaked draft version of the Trans-Pacific Partnership (TPP) Intellectual Property Rights Chapter. Since the first leaked version, there has been numerous discussions and analysis on these agreements and their negative global ramifications. From the Electronic Frontier Foundation, “The TPP still contains text on DRM, ISP liability, copyright term lengths, and criminal enforcement measures, and introduces new provisions on trade secrets that have us worried.”

The Global Intellectual Property Center (GIPC) of the U.S. Chamber of Commerce has been generally in support of the TPP clauses that have been released. They have released a “Top 10 Myths About the IP Chapter” of the TPP, available on the GIPC website.

Intellectual Property Watch released a fairly comprehensive article, detailing the views and issues brought forth by the critics of the TPP draft. From the article, “One of the most revealing aspects of the document is that it shows which countries take which positions – and shows the United States and Japan to be on the extreme when it comes to intellectual property protection and trimming of exceptions, sources say.”

Do you have an opinion on the leaked draft TPP documents? Let us know on Twitter, @Dennemeyer.

As temperatures have started to drop across the U.S., IP matters remain heated. Below is a recap of key highlights in U.S. intellectual property.

United States Patent and Trademark Office

New Director of USPTO nominated

Michelle K. Lee was formally nominated as the next Under Secretary for Intellectual Property and Director of the U.S. Patent and Trademark Office; she has been serving as Deputy Director since January 2014. She will be the first woman to be permanent director of the USPTO.

Michelle Lee’s first public speech post-nomination was as the opening speaker for the AIPLA (American Intellectual Property Law Association) Annual Meeting in Washington D.C. A recap of this speech is provided by the IAM blog. Of interest is her assertion of continued support for congressional patent reform agenda.

New Informational Resources

The USPTO has made available new informational resources, called “toolkits”, in regards to common questions on trademark and patent litigation. This webpage is especially important for small businesses and sole properties that receive cease and desist letters and are unclear on next steps.  To view this information, go to the USPTO website.

Copyrights in the Spotlight

While patents continue to draw high profile coverage in major newspapers and magazines, copyright took the spotlight in a New Yorker article that asked, “Are copyright laws too strict?” This article takes a deep look at the myriad of copyright issues as well as the history of copyright in the U.S. A key point made by the author, Louis Menand, is that “The problem is that the judicial record is inconsistent” and “Judicial unpredictability makes for legal anxiety.” Read the full article on The New Yorker website. Let us know your thoughts on Twitter, @Dennemeyer.

Trans-Pacific Partnership, IP Chapter

On October 16, 2014, WikiLeaks released a second leaked draft version of the Trans-Pacific Partnership (TPP) Intellectual Property Rights Chapter. Since the first leaked version, there has been numerous discussions and analysis on these agreements and their negative global ramifications. From the Electronic Frontier Foundation, “The TPP still contains text on DRM, ISP liability, copyright term lengths, and criminal enforcement measures, and introduces new provisions on trade secrets that have us worried.”

The Global Intellectual Property Center (GIPC) of the U.S. Chamber of Commerce has been generally in support of the TPP clauses that have been released. They have released a “Top 10 Myths About the IP Chapter” of the TPP, available on the GIPC website.

Intellectual Property Watch released a fairly comprehensive article, detailing the views and issues brought forth by the critics of the TPP draft. From the article, “One of the most revealing aspects of the document is that it shows which countries take which positions – and shows the United States and Japan to be on the extreme when it comes to intellectual property protection and trimming of exceptions, sources say.”

Do you have an opinion on the leaked draft TPP documents? Let us know on Twitter, @Dennemeyer.

Read more

We are happy and proud to inform our clients and customers that Dennemeyer S.A. has successfully implemented and maintains an Information Security Management System (ISMS).

Through an audit, it was verified that the management system fulfils the requirements of the standard ISO 27001.

We are happy and proud to inform our clients and customers that Dennemeyer S.A. has successfully implemented and maintains an Information Security Management System (ISMS).

Through an audit, it was verified that the management system fulfils the requirements of the standard ISO 27001.

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A discordant dichotomy or business as usual?

The Custodian of the Two Holy Mosques, Fahad bin Abdul Aziz Al Saud, king of Saudi Arabia from 1982 to 2005, promulgated in the Trademark Law: “The following signs, emblems, flags, and others as listed below, shall not be considered or registered as trademarks: Any expression or sign or drawing violating religion or which is identical or similar to a symbol of religious nature.”

Likewise, the Patent Regulation of the Cooperation Council for the Arab States of the Gulf says: “An invention shall be patentable ... if it is ... not contrary to the laws of Islamic Shariah, or public order, or to morality observed in the Cooperation Council States, whether that was pertaining to new products, industrial processes, or to manufacturing methods.”

Similar provisions can be found in many intellectual property laws set up by states that follow Islam, either by constitution or because the majority of their population is Muslim. The latter is the case in the following 56 territories: Afghanistan, Albania, Algeria, Azerbaijan, Bahrain, Bangladesh, Brunei, Burkina Faso, Chad, Comoros, Djibouti, Egypt, Eritrea, Gambia, Gaza, Guinea, Guinea Bissau, Indonesia, Iran, Iraq, Jordan, Kazakhstan, Kosovo, Kurdistan, Kuwait, Kyrgyzstan, Lebanon, Libya, Malaysia, Maldives, Mali, Mauritania, Mayotte, Morocco, Niger, Nigeria, Oman, Pakistan, Qatar, Saudi Arabia, Senegal, Sierra Leone, Somalia, Sudan, Syria, Tajikistan, Tunisia, Turkey, Turkmenistan,
United Arab Emirates, Uzbekistan, West Bank, Western Sahara and Yemen (India counts more than 160 million Muslims, but as a minority).

In order to get a better picture of the possible repercussions of religion on IP rights, we will briefly delve into the concept of shariah, analyse its impact on IP, and compare this to the situation in countries in the west.

What is shariah?

In classical Arabic, the noun shariah denotes “a path leading to a watering place”. Considering that water symbolises (eternal) life, and that the path thereto has been codified by the three Abrahamic religions (jointly also called ‘book religions’), the term shariah has been adopted to collect all Islamic laws under one tenet.

There are two primary sources for the shariah: the Holy Quran and the Sunnah, ie, the examples given by the life and teachings of Prophet Muhammad. Both have at length been elucidated in deep treatises by different respected scholars, which — from way back then until today — remain the utmost authorities in all questions of their interpretation (fiqh).

As a third fountain, the consensus of the leading scholars (ijma) is sought, and, in the last resort, analogy (qiyas) may be used.

Read the full article in the IPProTheInternet magazine - Annual Edition 2014/2015 - PDF article attached. To view the full online magazine, click here.

A discordant dichotomy or business as usual?

The Custodian of the Two Holy Mosques, Fahad bin Abdul Aziz Al Saud, king of Saudi Arabia from 1982 to 2005, promulgated in the Trademark Law: “The following signs, emblems, flags, and others as listed below, shall not be considered or registered as trademarks: Any expression or sign or drawing violating religion or which is identical or similar to a symbol of religious nature.”

Likewise, the Patent Regulation of the Cooperation Council for the Arab States of the Gulf says: “An invention shall be patentable ... if it is ... not contrary to the laws of Islamic Shariah, or public order, or to morality observed in the Cooperation Council States, whether that was pertaining to new products, industrial processes, or to manufacturing methods.”

Similar provisions can be found in many intellectual property laws set up by states that follow Islam, either by constitution or because the majority of their population is Muslim. The latter is the case in the following 56 territories: Afghanistan, Albania, Algeria, Azerbaijan, Bahrain, Bangladesh, Brunei, Burkina Faso, Chad, Comoros, Djibouti, Egypt, Eritrea, Gambia, Gaza, Guinea, Guinea Bissau, Indonesia, Iran, Iraq, Jordan, Kazakhstan, Kosovo, Kurdistan, Kuwait, Kyrgyzstan, Lebanon, Libya, Malaysia, Maldives, Mali, Mauritania, Mayotte, Morocco, Niger, Nigeria, Oman, Pakistan, Qatar, Saudi Arabia, Senegal, Sierra Leone, Somalia, Sudan, Syria, Tajikistan, Tunisia, Turkey, Turkmenistan,
United Arab Emirates, Uzbekistan, West Bank, Western Sahara and Yemen (India counts more than 160 million Muslims, but as a minority).

In order to get a better picture of the possible repercussions of religion on IP rights, we will briefly delve into the concept of shariah, analyse its impact on IP, and compare this to the situation in countries in the west.

What is shariah?

In classical Arabic, the noun shariah denotes “a path leading to a watering place”. Considering that water symbolises (eternal) life, and that the path thereto has been codified by the three Abrahamic religions (jointly also called ‘book religions’), the term shariah has been adopted to collect all Islamic laws under one tenet.

There are two primary sources for the shariah: the Holy Quran and the Sunnah, ie, the examples given by the life and teachings of Prophet Muhammad. Both have at length been elucidated in deep treatises by different respected scholars, which — from way back then until today — remain the utmost authorities in all questions of their interpretation (fiqh).

As a third fountain, the consensus of the leading scholars (ijma) is sought, and, in the last resort, analogy (qiyas) may be used.

Read the full article in the IPProTheInternet magazine - Annual Edition 2014/2015 - PDF article attached. To view the full online magazine, click here.

Read more

New gTLDs and the programme that gave birth to them are developing their own personalities, as expert panellists reveal.

Where are we at with the new gTLD programme? What should IP owners be aware of, now and in the next 12 months?

Clémence Le Cointe: In July, ICANN revealed that of the 1930 applications received, 1719 had been evaluated.

Up to this point, approximately 319 gTLDs were delegated, which means that more than 75 percent of the gTLDs for which contracts have been concluded still have to be delegated.

There are more than two million registered domains under the new gTLDs. These are spread among 371 available strings managed by 186 different registrars.

More than 1.5 million (79.58 percent) of these domains are parked, meaning that most registered domains under new gTLDs are not used.

According to July 2014 statistics, the TMCH, which is closely aligned with the new gTLD programme, is also gaining more importance, with 31,866 trademarks registered with the clearinghouse to-date.

This shows a growth of approximately 1000 trademarks per month.

It is clear from these statistics that the new gTLD programme is far from complete. It is therefore important for trademark owners to continue to monitor and be aware of the new gTLDs that have been released during the first round.

Trademark owners should concentrate on the strings that already exist or will be delegated and establish a clear strategy. They should not neglect the registration of their most important trademarks at the TMCH. There is still a substantial number of strings that have to be delegated and that can be of interest, depending on the field of activity.

It is important for trademark owners to take advantage of the opportunity offered when trademarks are registered at the TMCH and to register domain names with new gTLDs of interest during sunrise periods.

It will take some years until all strings are delegated and accessible, so it will be constant work for IP professionals, be they in-house or in private practice.

Read the full article in the IPProTheInternet magazine - issue 51 - PDF article attached. To view the full online magazine, click here.

New gTLDs and the programme that gave birth to them are developing their own personalities, as expert panellists reveal.

Where are we at with the new gTLD programme? What should IP owners be aware of, now and in the next 12 months?

Clémence Le Cointe: In July, ICANN revealed that of the 1930 applications received, 1719 had been evaluated.

Up to this point, approximately 319 gTLDs were delegated, which means that more than 75 percent of the gTLDs for which contracts have been concluded still have to be delegated.

There are more than two million registered domains under the new gTLDs. These are spread among 371 available strings managed by 186 different registrars.

More than 1.5 million (79.58 percent) of these domains are parked, meaning that most registered domains under new gTLDs are not used.

According to July 2014 statistics, the TMCH, which is closely aligned with the new gTLD programme, is also gaining more importance, with 31,866 trademarks registered with the clearinghouse to-date.

This shows a growth of approximately 1000 trademarks per month.

It is clear from these statistics that the new gTLD programme is far from complete. It is therefore important for trademark owners to continue to monitor and be aware of the new gTLDs that have been released during the first round.

Trademark owners should concentrate on the strings that already exist or will be delegated and establish a clear strategy. They should not neglect the registration of their most important trademarks at the TMCH. There is still a substantial number of strings that have to be delegated and that can be of interest, depending on the field of activity.

It is important for trademark owners to take advantage of the opportunity offered when trademarks are registered at the TMCH and to register domain names with new gTLDs of interest during sunrise periods.

It will take some years until all strings are delegated and accessible, so it will be constant work for IP professionals, be they in-house or in private practice.

Read the full article in the IPProTheInternet magazine - issue 51 - PDF article attached. To view the full online magazine, click here.

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A bridge between past and future

“The best men in all ages keep classic traditions alive.” Spanish philosopher George Santayana could well have had geographical indications (GIs) — legal instruments used to protect traditional manufacturing methods — in mind when he was reflecting on the connection between past and present.

Certainly, GIs have sometimes been ridiculed as just an odd means of protectionism stemming from the old world, far from being suitable for due application in developing or emerging markets. But there is the opposite view: a deeper glance at their economic potential has indeed shown GIs to be a promising and efficient means to promote local goods, precisely in less industrialised areas that are capable of building up new income and employment opportunities.

For instance, the EU with its historical predilection for GIs can willingly be taken as an exemplary benchmark, where the first 70 GIs alone accrue $5 billion in turnover each year (the total being $75 billion per annum for all European GIs). This on account of the fact that 70 percent of consumers are ready to spend between 10 percent and 300 percent more for a good certified as a GI than for a no-origin product.

While Europe is still restricting GI protection to certain foodstuffs and beverages, GIs can readily also cover handicrafts and even services.

International treaties

It’s no wonder that GIs have long since been recognised as fully-fledged — if still peculiar — IP rights, on par with patents and trademarks. Sixteen out of the 19 Middle East and North Africa (MENA) states have adhered to one or more of the following international treaties recognising GIs:

  • 1883 — Paris Convention on the Protection of Industrial Property: Algeria, Bahrain, Egypt, Iran, Iraq, Jordan, Lebanon, Libya, Morocco, Oman, Qatar, Saudi Arabia, Syria, Tunisia, the United Arab Emirates and Yemen (16).
  • 1891 — Madrid Agreement on the Repression of False or Deceptive Indications of Source: Algeria, Iran, Lebanon, Morocco, Syria and Tunisia (6).
  • 1951 — Stresa Convention on the Use of Designations of Origin and names for Cheeses: none.
  • 1958 — Lisbon Agreement for the Protection of Appellations of Origin and their International Registration: Algeria, Iran, and Tunisia (3).
  • 1996 — Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS): Bahrain, Egypt, Jordan, Morocco, Oman, Qatar, Saudi Arabia, Tunisia, United Arab Emirates and Yemen (10).
  • 2008 — The World IP Organization is starting a review of the 1958 Lisbon System in order to make it more attractive to new members. Among the observers are: Algeria, Iran, Iraq, Libya, Morocco, Saudi Arabia, Tunisia and the United Arab Emirates (8).

Read the full article in the IPProTheInternet magazine - issue 50 - PDF article attached. To view the full online magazine, click here.

A bridge between past and future

“The best men in all ages keep classic traditions alive.” Spanish philosopher George Santayana could well have had geographical indications (GIs) — legal instruments used to protect traditional manufacturing methods — in mind when he was reflecting on the connection between past and present.

Certainly, GIs have sometimes been ridiculed as just an odd means of protectionism stemming from the old world, far from being suitable for due application in developing or emerging markets. But there is the opposite view: a deeper glance at their economic potential has indeed shown GIs to be a promising and efficient means to promote local goods, precisely in less industrialised areas that are capable of building up new income and employment opportunities.

For instance, the EU with its historical predilection for GIs can willingly be taken as an exemplary benchmark, where the first 70 GIs alone accrue $5 billion in turnover each year (the total being $75 billion per annum for all European GIs). This on account of the fact that 70 percent of consumers are ready to spend between 10 percent and 300 percent more for a good certified as a GI than for a no-origin product.

While Europe is still restricting GI protection to certain foodstuffs and beverages, GIs can readily also cover handicrafts and even services.

International treaties

It’s no wonder that GIs have long since been recognised as fully-fledged — if still peculiar — IP rights, on par with patents and trademarks. Sixteen out of the 19 Middle East and North Africa (MENA) states have adhered to one or more of the following international treaties recognising GIs:

  • 1883 — Paris Convention on the Protection of Industrial Property: Algeria, Bahrain, Egypt, Iran, Iraq, Jordan, Lebanon, Libya, Morocco, Oman, Qatar, Saudi Arabia, Syria, Tunisia, the United Arab Emirates and Yemen (16).
  • 1891 — Madrid Agreement on the Repression of False or Deceptive Indications of Source: Algeria, Iran, Lebanon, Morocco, Syria and Tunisia (6).
  • 1951 — Stresa Convention on the Use of Designations of Origin and names for Cheeses: none.
  • 1958 — Lisbon Agreement for the Protection of Appellations of Origin and their International Registration: Algeria, Iran, and Tunisia (3).
  • 1996 — Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS): Bahrain, Egypt, Jordan, Morocco, Oman, Qatar, Saudi Arabia, Tunisia, United Arab Emirates and Yemen (10).
  • 2008 — The World IP Organization is starting a review of the 1958 Lisbon System in order to make it more attractive to new members. Among the observers are: Algeria, Iran, Iraq, Libya, Morocco, Saudi Arabia, Tunisia and the United Arab Emirates (8).

Read the full article in the IPProTheInternet magazine - issue 50 - PDF article attached. To view the full online magazine, click here.

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Albanian Law Nr. 9977 dated 07.07.2008 on Industrial Property was amended in May 2014. The amendments in the law aim to improve the legal framework for the protection of industrial property in the Republic of Albania and to bring it in line with EU standards and acquis communautaire, as well as with the requirements of the European Patent Convention. Further, the changes reflect the needs identified in law enforcement in practice and fulfill the recommendations made by the European Commission Progress Report on Albania in 2013.

The amendments bring Albania’s IP legislation more in line with the requirements of the European Patent Convention and make it fully compliant with EC directives such as:

  • Directive 98/44 / EC “For the legal protection of biotechnological inventions”;
  • Directive 98/71 / EC "For the legal protection of designs";
  • Directive 2008/95 / EC "trademark";
  • Directive 2004/48 / EC "On protection of industrial property rights".

The most interesting change for all European patent holders is the applicability of the EPC, namely extension of EPs. A whole new chapter is introduced in the law regarding the EP validations in Albania according to the EPC: note that a translation of the claims into Albanian must be filed with the Albanian Patent Office.

In addition, the amended regulation introduces use of the article 141 paragraph 2 of EPC mutatis mutandis, meaning that any patent annuity fees falling due within two months of the publication of granted European patents in the European Patent Bulletin shall be deemed to have been validly paid if they are paid within that period. Any additional fee provided for under national law shall not be charged.

For trademark owners, interesting amendments are made in the trademark procedure, namely establishing an open list of distinguished signs that can be registered as trademarks, including better definitions of absolute and relative grounds of trademark refusal.

Relevant articles that govern the right of the trademark registration, respective limitations and the revocations are also amended accordingly. Finally, the procedures for the registration of certifying trademarks and collective trademarks are introduced.

Other regulation amendments are made on issues regarding:

  • Non-prejudicial disclosures of novelty;
  • Description of the invention when the invention involves the use of or concerns biological material which is not available to the public and that cannot be described in the application;
  • The right to priority (request for restoration of the priority right);
  • The rights conferred by a patent on a biological material, on a process that enables a biological material and on a product containing or consisting of genetic information;
  • Compulsory licenses for patents on plant varieties;
  • Extension of time limit to file the translation of claims;
  • Design protection by design right registered in accordance with copyright protection as from the date on which the design was created; cases when the industrial designs are refused on relative grounds as well as the principle of protecting the unregistered industrial designs for as long as protection of such design is not accurately defined in the law (namely lifetime and the aim of the granted right);
  • In order to better harmonize with EC directive 2004/48/CE and improve the law structure, provisions on execution of rights deriving from patents, trademarks, designs or geographic indicators are all concentrated in one chapter at the end of the law.

Our local office Dennemeyer & Associates in Croatia is ready to provide further information or assist you in meeting all the necessary requirements imposed by the new law. Contact us at: info@dennemeyer-law.com.

Albanian Law Nr. 9977 dated 07.07.2008 on Industrial Property was amended in May 2014. The amendments in the law aim to improve the legal framework for the protection of industrial property in the Republic of Albania and to bring it in line with EU standards and acquis communautaire, as well as with the requirements of the European Patent Convention. Further, the changes reflect the needs identified in law enforcement in practice and fulfill the recommendations made by the European Commission Progress Report on Albania in 2013.

The amendments bring Albania’s IP legislation more in line with the requirements of the European Patent Convention and make it fully compliant with EC directives such as:

  • Directive 98/44 / EC “For the legal protection of biotechnological inventions”;
  • Directive 98/71 / EC "For the legal protection of designs";
  • Directive 2008/95 / EC "trademark";
  • Directive 2004/48 / EC "On protection of industrial property rights".

The most interesting change for all European patent holders is the applicability of the EPC, namely extension of EPs. A whole new chapter is introduced in the law regarding the EP validations in Albania according to the EPC: note that a translation of the claims into Albanian must be filed with the Albanian Patent Office.

In addition, the amended regulation introduces use of the article 141 paragraph 2 of EPC mutatis mutandis, meaning that any patent annuity fees falling due within two months of the publication of granted European patents in the European Patent Bulletin shall be deemed to have been validly paid if they are paid within that period. Any additional fee provided for under national law shall not be charged.

For trademark owners, interesting amendments are made in the trademark procedure, namely establishing an open list of distinguished signs that can be registered as trademarks, including better definitions of absolute and relative grounds of trademark refusal.

Relevant articles that govern the right of the trademark registration, respective limitations and the revocations are also amended accordingly. Finally, the procedures for the registration of certifying trademarks and collective trademarks are introduced.

Other regulation amendments are made on issues regarding:

  • Non-prejudicial disclosures of novelty;
  • Description of the invention when the invention involves the use of or concerns biological material which is not available to the public and that cannot be described in the application;
  • The right to priority (request for restoration of the priority right);
  • The rights conferred by a patent on a biological material, on a process that enables a biological material and on a product containing or consisting of genetic information;
  • Compulsory licenses for patents on plant varieties;
  • Extension of time limit to file the translation of claims;
  • Design protection by design right registered in accordance with copyright protection as from the date on which the design was created; cases when the industrial designs are refused on relative grounds as well as the principle of protecting the unregistered industrial designs for as long as protection of such design is not accurately defined in the law (namely lifetime and the aim of the granted right);
  • In order to better harmonize with EC directive 2004/48/CE and improve the law structure, provisions on execution of rights deriving from patents, trademarks, designs or geographic indicators are all concentrated in one chapter at the end of the law.

Our local office Dennemeyer & Associates in Croatia is ready to provide further information or assist you in meeting all the necessary requirements imposed by the new law. Contact us at: info@dennemeyer-law.com.

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"Change is the essential process of all existence”, Commander Spock said in one of the last episodes of the original Star Trek series. Since the US Supreme Court published its long-awaited opinion on Alice v CLS  Bank, many commentators have tried to use Alice in Wonderland references to describe the situation, but Commander Spock hit the mark.

The current situation of computer-implemented inventions in the US is far from clear. While David Kappos, former director of the US Patent and Trademark Office (USPTO), considers protection for software innovation to be intact, several others are of the opinion that gaining protection for computer-implemented inventions has now become harder, if not impossible. However applicants for a US patent in that field might at least hope to be spared different interpretations of the issue by the examiners, as the USPTO reacted quickly to Alice and issued Preliminary Examining Instructions.

Accordingly, examiners will look at all claims using a two-part analysis familiar from the Mayo v Prometheus case, ie, by determining:

  • Whether the claims are directed to an abstract idea (part I); and
  • In case an abstract idea is present in the claims, whether there is significant additional subject matter than the abstract idea itself (part II).

These Preliminary Examining Instructions were open for public comments until July 31, and might be changed depending on the submitted comments.

Meanwhile, all parties interested will make use of the court’s decision to modify current proceedings or even to reopen closed cases. For example, Samsung is using Alice to challenge two Apple patents, which were used to attack Samsung  in the past.

So, with all the heavily cited court opinions out there — Bilski, Mayo, and now Alice among them — the  way  patent  applications and, in particular, their claims are examined and thus the way in which they should be drafted, has changed tremendously over recent years. This change requires constant attention by all practitioners, but following case law is an important obligation in every jurisdiction.

Read the full article in the World Intellectual Property Review magazine - September/October 2014 issue - PDF article attached.

"Change is the essential process of all existence”, Commander Spock said in one of the last episodes of the original Star Trek series. Since the US Supreme Court published its long-awaited opinion on Alice v CLS  Bank, many commentators have tried to use Alice in Wonderland references to describe the situation, but Commander Spock hit the mark.

The current situation of computer-implemented inventions in the US is far from clear. While David Kappos, former director of the US Patent and Trademark Office (USPTO), considers protection for software innovation to be intact, several others are of the opinion that gaining protection for computer-implemented inventions has now become harder, if not impossible. However applicants for a US patent in that field might at least hope to be spared different interpretations of the issue by the examiners, as the USPTO reacted quickly to Alice and issued Preliminary Examining Instructions.

Accordingly, examiners will look at all claims using a two-part analysis familiar from the Mayo v Prometheus case, ie, by determining:

  • Whether the claims are directed to an abstract idea (part I); and
  • In case an abstract idea is present in the claims, whether there is significant additional subject matter than the abstract idea itself (part II).

These Preliminary Examining Instructions were open for public comments until July 31, and might be changed depending on the submitted comments.

Meanwhile, all parties interested will make use of the court’s decision to modify current proceedings or even to reopen closed cases. For example, Samsung is using Alice to challenge two Apple patents, which were used to attack Samsung  in the past.

So, with all the heavily cited court opinions out there — Bilski, Mayo, and now Alice among them — the  way  patent  applications and, in particular, their claims are examined and thus the way in which they should be drafted, has changed tremendously over recent years. This change requires constant attention by all practitioners, but following case law is an important obligation in every jurisdiction.

Read the full article in the World Intellectual Property Review magazine - September/October 2014 issue - PDF article attached.

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In decisions G 2/07 and G 1/08, the so called “Broccoli” and “Tomatoes” decisions from the Enlarged Board of Appeal of the European Patent Office, biological inventions under the EPC were analyzed in detail. It was held that a non-microbiological process for the production of plants, which contains or consists of the steps of sexually crossing the whole genomes of plants and of subsequently selecting plants, is in principle excluded from patentability as being "essentially biological" within the meaning of Article 53(b) EPC (headnote 1).

The additional presence of “a step of a technical nature which serves to enable or assist the performance of the steps of sexually crossing the whole genomes of plants or of subsequently selecting plants” is not enough to escape the exclusion (headnote 2). However, a “step of a technical nature which step by itself introduces a trait into the genome or modifies a trait in the genome of the plant produced, so that the introduction or modification of that trait is not the result of the mixing of the genes of the plants chosen for sexual crossing” is enough to escape the exclusion (headnote 3). For the examination whether such a process is excluded from patentability as being essentially biological, “it is not relevant whether a step of a technical nature is a new or known measure, whether it is trivial or a fundamental alteration of a known process, whether it does or could occur in nature or whether the essence of the invention lies in it” (headnote 4).

The guidelines provided in the mentioned decisions regarding patentable biological inventions under the EPC are however not concluding. Currently, two further referrals to the Enlarged Board of Appeal concerning biological inventions are pending (G 2/12, “Tomatoes II”; and G 2/13, “Broccoli II”).

Moreover, in decision T 1729/06 from 17 September 2014, the ruling Board of Appeal explicitly states that decisions G 2/07 and G 1 /08 provide neither comprehensive nor exhaustive definitions of subject matters that would be excluded from patentability under Article 53(b) EPC (see T 1729/06, “Seedless watermelon”, at no. 20 of the Reasons). This decision relies on the Implementing Regulations of the EPC, in particular Rules 26(2) and 27 EPC, to emphasize that biotechnological inventions are in principle patentable under the EPC. The Board itself puts it this way:

Rule 26(2) EPC states that "biotechnological inventions are inventions which concern a product consisting of or containing biological material or a process by means of which biological material is produced, processed or used", whereby "biological material" is defined in Rule 26(3) EPC as any material containing genetic information and capable of reproducing itself or being reproduced in a biological system. Undoubtedly the presently claimed use and methods therefore concern "biotechnological inventions" and are therefore, in principle, patentable (Article 52(1) and Rule 27 EPC).

In the end, the Board in T 1729/06 comes to the conclusion that the legislator drafting Article 53(b) EPC did not have the intention to exclude from patentability a whole class of inventions, i.e. horticultural or agricultural processes. The Board further concludes that the EPC legislator only wished to exclude from patentability, in the context of the process aspect of the exclusion in relation to plant inventions, the - then conventional - processes applied by plant breeders in connection with new plant varieties for which a special property right was available under the International Convention for the Protection of New Varieties of Plants and processes which were fundamentally of this type.

The case underlying T 1729/06 was an appeal against a refusing decision from an Examining Division of the European Patent Office. The appeal was allowed and the case was remitted to the first instance for further prosecution. The “Seedless watermelon” is therefore not yet as famous as the “Tomatoes” and the “Broccoli”, but it is quite remarkable in the context of biological inventions under the EPC.



In decisions G 2/07 and G 1/08, the so called “Broccoli” and “Tomatoes” decisions from the Enlarged Board of Appeal of the European Patent Office, biological inventions under the EPC were analyzed in detail. It was held that a non-microbiological process for the production of plants, which contains or consists of the steps of sexually crossing the whole genomes of plants and of subsequently selecting plants, is in principle excluded from patentability as being "essentially biological" within the meaning of Article 53(b) EPC (headnote 1).

The additional presence of “a step of a technical nature which serves to enable or assist the performance of the steps of sexually crossing the whole genomes of plants or of subsequently selecting plants” is not enough to escape the exclusion (headnote 2). However, a “step of a technical nature which step by itself introduces a trait into the genome or modifies a trait in the genome of the plant produced, so that the introduction or modification of that trait is not the result of the mixing of the genes of the plants chosen for sexual crossing” is enough to escape the exclusion (headnote 3). For the examination whether such a process is excluded from patentability as being essentially biological, “it is not relevant whether a step of a technical nature is a new or known measure, whether it is trivial or a fundamental alteration of a known process, whether it does or could occur in nature or whether the essence of the invention lies in it” (headnote 4).

The guidelines provided in the mentioned decisions regarding patentable biological inventions under the EPC are however not concluding. Currently, two further referrals to the Enlarged Board of Appeal concerning biological inventions are pending (G 2/12, “Tomatoes II”; and G 2/13, “Broccoli II”).

Moreover, in decision T 1729/06 from 17 September 2014, the ruling Board of Appeal explicitly states that decisions G 2/07 and G 1 /08 provide neither comprehensive nor exhaustive definitions of subject matters that would be excluded from patentability under Article 53(b) EPC (see T 1729/06, “Seedless watermelon”, at no. 20 of the Reasons). This decision relies on the Implementing Regulations of the EPC, in particular Rules 26(2) and 27 EPC, to emphasize that biotechnological inventions are in principle patentable under the EPC. The Board itself puts it this way:

Rule 26(2) EPC states that "biotechnological inventions are inventions which concern a product consisting of or containing biological material or a process by means of which biological material is produced, processed or used", whereby "biological material" is defined in Rule 26(3) EPC as any material containing genetic information and capable of reproducing itself or being reproduced in a biological system. Undoubtedly the presently claimed use and methods therefore concern "biotechnological inventions" and are therefore, in principle, patentable (Article 52(1) and Rule 27 EPC).

In the end, the Board in T 1729/06 comes to the conclusion that the legislator drafting Article 53(b) EPC did not have the intention to exclude from patentability a whole class of inventions, i.e. horticultural or agricultural processes. The Board further concludes that the EPC legislator only wished to exclude from patentability, in the context of the process aspect of the exclusion in relation to plant inventions, the - then conventional - processes applied by plant breeders in connection with new plant varieties for which a special property right was available under the International Convention for the Protection of New Varieties of Plants and processes which were fundamentally of this type.

The case underlying T 1729/06 was an appeal against a refusing decision from an Examining Division of the European Patent Office. The appeal was allowed and the case was remitted to the first instance for further prosecution. The “Seedless watermelon” is therefore not yet as famous as the “Tomatoes” and the “Broccoli”, but it is quite remarkable in the context of biological inventions under the EPC.



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In his timeless masterpiece The Little Prince, Antoine de Saint-Exupéry meditates: “I have always loved the desert. One sits down on a desert sand dune, sees nothing, hears nothing. Yet through the silence something throbs, and gleams ...” And even today, more than 70 years after this classic tale was written, one can find little gems in the desert, more precisely in today’s Riyadh, the Saudi capital, which is home to the Gulf Cooperation Council Patent Office (GCC PTO).

It all started back in 1981, when the Gulf Cooperation Council (GCC) was established in Abu Dhabi between the six founding members: Bahrain, Kuwait, Oman, Qatar, Saudi Arabia, and the United Arab Emirates.

Apart from being meant as a political stronghold against the uprising neighbor states, the Council significantly fostered its interest right from the start, focusing on the economic development of its members. Plans such as a common currency came up but, like fellow initiatives (such as transforming the GCC into a full confederation), are still waiting to see the light. On the other hand, some by no means less ambitious projects did make it to become a reality: in the present context, of course, we refer to the regional IP organization known as the GCC PTO.

Adepts of the desert know very well that between the wide sky and the endless sands, time takes on its own dimension: only in 1987, the first patent law was set up; in 1992, the GCC Patent Convention signed; in 1998, the GCC PTO established; finally, on October 3, 1998, the first patent application was filed. So where are we today, 15 years of experience later?

State of play

The GCC has developed into the most important economic player in the Middle East and North Africa (or MENA) region. Even without the envisaged enlargement to Iraq, Jordan, Morocco, and Yemen, the current GCC members account for over 50% of the OPEC oil, or 16.5% of the world production; their combined nominal gross domestic product equals ca. US$ 1,500 billion.

And with the GCC PTO, more than 27,000 patents have been filed!

The ten most important filing countries are:

  • USA,
  • Netherlands,
  • UK,
  • Switzerland,
  • Saudi Arabia,
  • France,
  • Germany,
  • Japan,
  • Belgium, and
  • Italy.

The PTO currently employs around 90 people, including 30 examiners. Since there are no local branches, all applications have to be filed directly with the Office: first electronically, then additionally in paper form (this sequence is mandatory).

To read the full article, please view the PDF attached (as published in The Patent Lawyer magazine).

In his timeless masterpiece The Little Prince, Antoine de Saint-Exupéry meditates: “I have always loved the desert. One sits down on a desert sand dune, sees nothing, hears nothing. Yet through the silence something throbs, and gleams ...” And even today, more than 70 years after this classic tale was written, one can find little gems in the desert, more precisely in today’s Riyadh, the Saudi capital, which is home to the Gulf Cooperation Council Patent Office (GCC PTO).

It all started back in 1981, when the Gulf Cooperation Council (GCC) was established in Abu Dhabi between the six founding members: Bahrain, Kuwait, Oman, Qatar, Saudi Arabia, and the United Arab Emirates.

Apart from being meant as a political stronghold against the uprising neighbor states, the Council significantly fostered its interest right from the start, focusing on the economic development of its members. Plans such as a common currency came up but, like fellow initiatives (such as transforming the GCC into a full confederation), are still waiting to see the light. On the other hand, some by no means less ambitious projects did make it to become a reality: in the present context, of course, we refer to the regional IP organization known as the GCC PTO.

Adepts of the desert know very well that between the wide sky and the endless sands, time takes on its own dimension: only in 1987, the first patent law was set up; in 1992, the GCC Patent Convention signed; in 1998, the GCC PTO established; finally, on October 3, 1998, the first patent application was filed. So where are we today, 15 years of experience later?

State of play

The GCC has developed into the most important economic player in the Middle East and North Africa (or MENA) region. Even without the envisaged enlargement to Iraq, Jordan, Morocco, and Yemen, the current GCC members account for over 50% of the OPEC oil, or 16.5% of the world production; their combined nominal gross domestic product equals ca. US$ 1,500 billion.

And with the GCC PTO, more than 27,000 patents have been filed!

The ten most important filing countries are:

  • USA,
  • Netherlands,
  • UK,
  • Switzerland,
  • Saudi Arabia,
  • France,
  • Germany,
  • Japan,
  • Belgium, and
  • Italy.

The PTO currently employs around 90 people, including 30 examiners. Since there are no local branches, all applications have to be filed directly with the Office: first electronically, then additionally in paper form (this sequence is mandatory).

To read the full article, please view the PDF attached (as published in The Patent Lawyer magazine).

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South Sudan’s Ministry of Justice has finally resumed registration of trademarks under the former Sudanese Trademark Act of 1969, although with some modifications, which should guarantee an expedite registration process especially for famous marks. Under the Act, a trademark may be registered according to the following steps:

  1. Filing an application with the Ministry of Justice.
  2. Formal examination.
  3. Publication in the Official Gazette.
  4. Facing any opposition, to be filed within 30 days.
  5. Issuance of the registration certificate for 10 years from the application date.


Requirements:

  1. Power of Attorney, signed and sealed (no legalization).
  2. Copy of the applicant's Memorandum of Association / Certificate of Incorporation.
  3. Letter on the letterhead addressed to the Minister of Justice, requesting reservation and registration of the trademark (signed and sealed).
  4. Full name and address of the applicant.
  5. Description of the goods or services (based on Nice Classification).
  6. Clear prints of the trademark.


The total official fees for reservation and registration of a trademark in one class are approximately US$ 120.

If you have any questions or need any clarification, please do not hesitate to contact us.

 

Dennemeyer & Associates Luxembourg

Phone: +352 276115-100
E-mail: info@dennemeyer-law.com

Dennemeyer & Associates UAE

Phone: +971 (0) 4430 3943
E-mail: info@dennemeyer-law.com

South Sudan’s Ministry of Justice has finally resumed registration of trademarks under the former Sudanese Trademark Act of 1969, although with some modifications, which should guarantee an expedite registration process especially for famous marks. Under the Act, a trademark may be registered according to the following steps:

  1. Filing an application with the Ministry of Justice.
  2. Formal examination.
  3. Publication in the Official Gazette.
  4. Facing any opposition, to be filed within 30 days.
  5. Issuance of the registration certificate for 10 years from the application date.


Requirements:

  1. Power of Attorney, signed and sealed (no legalization).
  2. Copy of the applicant's Memorandum of Association / Certificate of Incorporation.
  3. Letter on the letterhead addressed to the Minister of Justice, requesting reservation and registration of the trademark (signed and sealed).
  4. Full name and address of the applicant.
  5. Description of the goods or services (based on Nice Classification).
  6. Clear prints of the trademark.


The total official fees for reservation and registration of a trademark in one class are approximately US$ 120.

If you have any questions or need any clarification, please do not hesitate to contact us.

 

Dennemeyer & Associates Luxembourg

Phone: +352 276115-100
E-mail: info@dennemeyer-law.com

Dennemeyer & Associates UAE

Phone: +971 (0) 4430 3943
E-mail: info@dennemeyer-law.com

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Since March 2004, French Polynesia has an autonomous status and consequently the French IP rights had lost their validity. As remedy to this lack of protection, the Polynesian authorities have enacted a new regulation dated May 6, 2013 specifying the effects in French Polynesia of IP rights formerly acquired in France.

This new law concerns all French national IP rights, including trademarks, designs, and patents.

Here below is an overview of the provisions of the French Polynesian law and its consequences:

A) Automatic confirmation without any formality of the effects in Polynesia of the French titles of industrial property filed, renewed or extended with the French Office (INPI) before March 3, 2004.

The applications, renewals and extensions filed with the INPI before March 3, 2004 (and which have been subsequently registered) produce exactly the same effects in French Polynesia as on French territory without any formality to be observed.

Examples:

  • A French patent application filed in 2002, but published in 2005, will be automatically protected in French Polynesia.
  • A French trademark filed in 1996 will be protected automatically and without any formality in French Polynesia for the period from 1996 to 2006.

However, if the mark was renewed in 2006 or later, protection is subject to the so-called Optional Recognition (see below B).

B) Recognition of optional effects in French Polynesia of industrial property titles filed, renewed or extended with the INPI between March 3, 2004 and January 31, 2014 (Optional Recognition).

If your industrial property right has been filed, renewed or extended during March 3, 2004 and January 31, 2014 and you require protection in French Polynesia, you must seek recognition of your title with the French Polynesian authorities.

Examples:

  • A trademark filed with the INPI in 1996 will be protected without any formality in French Polynesia until 2006. Conversely, if the mark was renewed in 2006, its protection in Polynesia for the period from 2006 to 2016 is subject to the mechanism of Optional Recognition.
  • A design filed with the INPI in 2003 will be protected without any formality in French Polynesia until 2008. Conversely, if the design was extended in 2008 and further in 2013, its protection in Polynesia for the periods from 2008 to 2013 and from 2013 to 2018 reports to the mechanism of the Optional Recognition.

C) The Optional Recognition procedure

The applications for Optional Recognition in French Polynesia can be filed between September 1, 2013 and September 1, 2023. In order to apply, it is necessary to provide the following information and the payment of official fees:

  • Registration number of the French IP title,
  • Number and date of the official Bulletin in which the registrations and renewals have been advertised.

Consequently, if your French IP asset was filed, renewed or extended with the French INPI between March 3, 2004 and January 31, 2014 and you fail to apply for recognition in French Polynesia until September 1, 2023, you will lose IP protection in French Polynesia.

From February 1, 2014, any IP right filed or renewed with the French Office may be extended to French Polynesia upon payment of official fee.

We are at your disposal for any questions you may have about protecting your industrial property rights in French Polynesia and filing an application for recognition in French Polynesia of French IP rights concerned by the new regulation.

Email: info@dennemeyer-law.com
Phone: +352 276115-100

Since March 2004, French Polynesia has an autonomous status and consequently the French IP rights had lost their validity. As remedy to this lack of protection, the Polynesian authorities have enacted a new regulation dated May 6, 2013 specifying the effects in French Polynesia of IP rights formerly acquired in France.

This new law concerns all French national IP rights, including trademarks, designs, and patents.

Here below is an overview of the provisions of the French Polynesian law and its consequences:

A) Automatic confirmation without any formality of the effects in Polynesia of the French titles of industrial property filed, renewed or extended with the French Office (INPI) before March 3, 2004.

The applications, renewals and extensions filed with the INPI before March 3, 2004 (and which have been subsequently registered) produce exactly the same effects in French Polynesia as on French territory without any formality to be observed.

Examples:

  • A French patent application filed in 2002, but published in 2005, will be automatically protected in French Polynesia.
  • A French trademark filed in 1996 will be protected automatically and without any formality in French Polynesia for the period from 1996 to 2006.

However, if the mark was renewed in 2006 or later, protection is subject to the so-called Optional Recognition (see below B).

B) Recognition of optional effects in French Polynesia of industrial property titles filed, renewed or extended with the INPI between March 3, 2004 and January 31, 2014 (Optional Recognition).

If your industrial property right has been filed, renewed or extended during March 3, 2004 and January 31, 2014 and you require protection in French Polynesia, you must seek recognition of your title with the French Polynesian authorities.

Examples:

  • A trademark filed with the INPI in 1996 will be protected without any formality in French Polynesia until 2006. Conversely, if the mark was renewed in 2006, its protection in Polynesia for the period from 2006 to 2016 is subject to the mechanism of Optional Recognition.
  • A design filed with the INPI in 2003 will be protected without any formality in French Polynesia until 2008. Conversely, if the design was extended in 2008 and further in 2013, its protection in Polynesia for the periods from 2008 to 2013 and from 2013 to 2018 reports to the mechanism of the Optional Recognition.

C) The Optional Recognition procedure

The applications for Optional Recognition in French Polynesia can be filed between September 1, 2013 and September 1, 2023. In order to apply, it is necessary to provide the following information and the payment of official fees:

  • Registration number of the French IP title,
  • Number and date of the official Bulletin in which the registrations and renewals have been advertised.

Consequently, if your French IP asset was filed, renewed or extended with the French INPI between March 3, 2004 and January 31, 2014 and you fail to apply for recognition in French Polynesia until September 1, 2023, you will lose IP protection in French Polynesia.

From February 1, 2014, any IP right filed or renewed with the French Office may be extended to French Polynesia upon payment of official fee.

We are at your disposal for any questions you may have about protecting your industrial property rights in French Polynesia and filing an application for recognition in French Polynesia of French IP rights concerned by the new regulation.

Email: info@dennemeyer-law.com
Phone: +352 276115-100

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Dennemeyer is pleased to announce the signing of a collaboration agreement with Unilever plc, one of the world's leading, fast moving consumer goods companies headquartered in London (UK) and Rotterdam (The Netherlands).

Unilever is a leading supplier of Food, Home and Personal Care products with sales in over 190 countries. Over half of the company’s footprint is in the faster growing developing and emerging markets (57% in 2013) and generated annual sales of €49.8 billion in 2013. The Unilever portfolio includes some of the world’s best known brands, 14 of which now generate a turnover of €1 billion or more. 

With a strong focus on innovation, Unilever currently has a network of R&D centres spread around the world (UK, Netherlands, US, China and India) employing over 6,000 people. Unilever’s patent portfolio includes over 20,000 registered patents and patent applications.

The Group has appointed Dennemeyer to manage the patent and design annuity payments for their entire portfolio. In addition, Unilever will also be using Dennemeyer’s patent management software - DIAMS iQ - which will be administered by Unilever through their various offices globally.

As part of the implementation process, various software features will be customised and others added by Dennemeyer’s DIAMS iQ Implementation Team to meet Unilever’s needs. This includes a foreign filing module allowing Unilever to work with reduced manpower and therefore saving costs on all their PCT nationalisations.

Mr. Tiem Reijns, Senior Patent Attorney at Unilever, noted:

From the outset we had a clear idea of our requirements: a state of the art, intuitive and secure asset management software solution to manage our IP in-house and a provider who had the reputation and experience to reliably service our patent annuity payments. Dennemeyer has proven more than capable of fulfilling all our needs. Not only are they a professional and flexible working partner, but they have gone the extra mile to meet our extremely tight schedule. DIAMS iQ’s mix of key features coupled with the additional add-ons that Dennemeyer will develop for us mean we feel safe in the knowledge we have chosen the right solution and it’s exciting to imagine the positive impact DIAMS iQ will have on our team’s efficiency.”

Dr. Robert Fichter, Head of IT at Dennemeyer IP Solutions, commented:

We are extremely pleased to have the opportunity to partner with Unilever for one of Dennemeyer’s most comprehensive DIAMS iQ installation and customization projects so far. At the end of the project not only will we have developed a system that is ideal for Unilever’s needs, but we will also be able to swiftly implement the same functions for other clients also interested in these features.”

Dennemeyer is pleased to announce the signing of a collaboration agreement with Unilever plc, one of the world's leading, fast moving consumer goods companies headquartered in London (UK) and Rotterdam (The Netherlands).

Unilever is a leading supplier of Food, Home and Personal Care products with sales in over 190 countries. Over half of the company’s footprint is in the faster growing developing and emerging markets (57% in 2013) and generated annual sales of €49.8 billion in 2013. The Unilever portfolio includes some of the world’s best known brands, 14 of which now generate a turnover of €1 billion or more. 

With a strong focus on innovation, Unilever currently has a network of R&D centres spread around the world (UK, Netherlands, US, China and India) employing over 6,000 people. Unilever’s patent portfolio includes over 20,000 registered patents and patent applications.

The Group has appointed Dennemeyer to manage the patent and design annuity payments for their entire portfolio. In addition, Unilever will also be using Dennemeyer’s patent management software - DIAMS iQ - which will be administered by Unilever through their various offices globally.

As part of the implementation process, various software features will be customised and others added by Dennemeyer’s DIAMS iQ Implementation Team to meet Unilever’s needs. This includes a foreign filing module allowing Unilever to work with reduced manpower and therefore saving costs on all their PCT nationalisations.

Mr. Tiem Reijns, Senior Patent Attorney at Unilever, noted:

From the outset we had a clear idea of our requirements: a state of the art, intuitive and secure asset management software solution to manage our IP in-house and a provider who had the reputation and experience to reliably service our patent annuity payments. Dennemeyer has proven more than capable of fulfilling all our needs. Not only are they a professional and flexible working partner, but they have gone the extra mile to meet our extremely tight schedule. DIAMS iQ’s mix of key features coupled with the additional add-ons that Dennemeyer will develop for us mean we feel safe in the knowledge we have chosen the right solution and it’s exciting to imagine the positive impact DIAMS iQ will have on our team’s efficiency.”

Dr. Robert Fichter, Head of IT at Dennemeyer IP Solutions, commented:

We are extremely pleased to have the opportunity to partner with Unilever for one of Dennemeyer’s most comprehensive DIAMS iQ installation and customization projects so far. At the end of the project not only will we have developed a system that is ideal for Unilever’s needs, but we will also be able to swiftly implement the same functions for other clients also interested in these features.”

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Since 2010, the Acquisition International Magazine Intellectual Property Awards celebrate individuals and firms who are involved in driving the IP field and play a vital role in advancing innovation in the industry. This year, Dennemeyer has been granted three awards by Acquisition International: IP Management Firm of the Year (Germany), IP Portfolio Services Provider of the Year (Germany) and the IP Innovation Award for our pioneering Flat Fee Patent Prosecution Service.

Being recognized by the industry for our continuous work to improve servicing makes us feel proud of our efforts. Particularly receiving the Innovation Award for the new Flat Fee Prosecution service which allows attorneys to handle the entire lifecycle of patent applications in foreign countries for their clients, from filing to prosecution and grant, for a fixed fee per country empowers us to continue fine-tuning the service to meet our clients’ needs even better.

Responsible for establishing and managing the Flat Fee Prosecution service is our team in Frankfurt, led by Dr. Malte Köllner, Head of Foreign Filing at Dennemeyer & Associates. Dr. Köllner has vast experience in the field of intellectual property and has multiple times been acknowledged as one of the World’s Leading Lawyers and IP Strategists.

On the occasion of the award, we’ve addressed Dr. Köllner a few questions, to learn more about how the flat fee prosecution service works and how it benefits clients:

You have initiated the flat fee prosecution service that allows clients to achieve cost-effective foreign patent prosecution. How did you go about creating the new service and what are the practical benefits for clients?

One of the key elements is a tool that we have developed that allows information sharing between the attorneys working on members of the same patent family in different countries. With this tool, the use of information is more efficient. It enables the foreign associate to answer the majority of office actions without the need of additional feedback from the applicant or from the single point of contact - if there is one. Also, our approach eliminates translations of office actions. The new tool increases the overall productivity and enables leaner processes compared to the traditional approaches.

The benefits for the clients are superior quality at reduced costs. And the possibility to have the burdensome process of foreign prosecution reduced to the very essential without losing control.

The very essential is that clients want:

  • broad claims
  • granted
  • in a chosen country
  • for a fair price.

We communicate any claim amendments with clients and they are informed of what happens. And clients may choose to access the work sharing tools, put information related to strategy into the tools, specify the limitations they would prefer and control what happens in different countries.

Fig. 1: Foreign prosecution including our worksharing tools

 

What are the differences between the traditional foreign filing process and your flat fee prosecution approach?

The differences are in the way the flat fee prosecution procedure is organized (which we consider to be optimal as described above) and in the way we charge. We offer three pricing models:

  • the traditional billing by the hour,
  • stepwise flat fees, or
  • a total flat fee.

Clients can choose the way they want to be billed. If a client chooses the total flat fee until grant, then the price is quoted irrespective of the number of office actions that occur. If hourly billing or stepwise flat fees (charged based on the different steps involved in the process) are preferred, then what they finally pay depends on the number of office actions that occur. One type of billing is not necessarily better than the other; there are just three different options that suit different types of clients in their particular situation.

Can you exemplify cost reduction achievable by your improved approach on a specific market?

The cost reduction triggered by the new model falls into the range of 20-40% of the costs involved in foreign filing, as can be seen in the figure below.

Fig. 2: Cost reduction achieved by Dennemeyer flat fee prosecution

 

Read more about the flat fee prosecution service.

Read the interview given by Dr. Köllner for the online 2014 Intellectual Property Awards supplement by Acquisition International.

View the full list of awards received by Dennemeyer in 2014.



Since 2010, the Acquisition International Magazine Intellectual Property Awards celebrate individuals and firms who are involved in driving the IP field and play a vital role in advancing innovation in the industry. This year, Dennemeyer has been granted three awards by Acquisition International: IP Management Firm of the Year (Germany), IP Portfolio Services Provider of the Year (Germany) and the IP Innovation Award for our pioneering Flat Fee Patent Prosecution Service.

Being recognized by the industry for our continuous work to improve servicing makes us feel proud of our efforts. Particularly receiving the Innovation Award for the new Flat Fee Prosecution service which allows attorneys to handle the entire lifecycle of patent applications in foreign countries for their clients, from filing to prosecution and grant, for a fixed fee per country empowers us to continue fine-tuning the service to meet our clients’ needs even better.

Responsible for establishing and managing the Flat Fee Prosecution service is our team in Frankfurt, led by Dr. Malte Köllner, Head of Foreign Filing at Dennemeyer & Associates. Dr. Köllner has vast experience in the field of intellectual property and has multiple times been acknowledged as one of the World’s Leading Lawyers and IP Strategists.

On the occasion of the award, we’ve addressed Dr. Köllner a few questions, to learn more about how the flat fee prosecution service works and how it benefits clients:

You have initiated the flat fee prosecution service that allows clients to achieve cost-effective foreign patent prosecution. How did you go about creating the new service and what are the practical benefits for clients?

One of the key elements is a tool that we have developed that allows information sharing between the attorneys working on members of the same patent family in different countries. With this tool, the use of information is more efficient. It enables the foreign associate to answer the majority of office actions without the need of additional feedback from the applicant or from the single point of contact - if there is one. Also, our approach eliminates translations of office actions. The new tool increases the overall productivity and enables leaner processes compared to the traditional approaches.

The benefits for the clients are superior quality at reduced costs. And the possibility to have the burdensome process of foreign prosecution reduced to the very essential without losing control.

The very essential is that clients want:

  • broad claims
  • granted
  • in a chosen country
  • for a fair price.

We communicate any claim amendments with clients and they are informed of what happens. And clients may choose to access the work sharing tools, put information related to strategy into the tools, specify the limitations they would prefer and control what happens in different countries.

Fig. 1: Foreign prosecution including our worksharing tools

 

What are the differences between the traditional foreign filing process and your flat fee prosecution approach?

The differences are in the way the flat fee prosecution procedure is organized (which we consider to be optimal as described above) and in the way we charge. We offer three pricing models:

  • the traditional billing by the hour,
  • stepwise flat fees, or
  • a total flat fee.

Clients can choose the way they want to be billed. If a client chooses the total flat fee until grant, then the price is quoted irrespective of the number of office actions that occur. If hourly billing or stepwise flat fees (charged based on the different steps involved in the process) are preferred, then what they finally pay depends on the number of office actions that occur. One type of billing is not necessarily better than the other; there are just three different options that suit different types of clients in their particular situation.

Can you exemplify cost reduction achievable by your improved approach on a specific market?

The cost reduction triggered by the new model falls into the range of 20-40% of the costs involved in foreign filing, as can be seen in the figure below.

Fig. 2: Cost reduction achieved by Dennemeyer flat fee prosecution

 

Read more about the flat fee prosecution service.

Read the interview given by Dr. Köllner for the online 2014 Intellectual Property Awards supplement by Acquisition International.

View the full list of awards received by Dennemeyer in 2014.



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DIAMS iQ demo customers are invited to test and experience mobiQ, the DIAMS iQ version optimized for mobile devices, allowing searching and browsing through the DIAMS iQ database.

Search results can be displayed as a world map or as a list. Furthermore, simple statistics (e.g. number of applications per filing or registration year) are available through a menu.

The mobiQ web application supports touch screen functionalities such as zooming in/out gestures. mobiQ is platform and browser independent and can be used with any web browser such as Internet Explorer, Firefox Mozilla, Safari (mobile and desktop) and others.

Customers with active credentials for the DIAMS iQ demo system can access the system at https://iqdemo.dennemeyer.com:8099/mobiQ/, noting that the application is not intended to allow editing of assets.

In the future, this application will show the same functionality as our web application (WSS) for DIAMS classic, allowing more DIAMS classic users to switch to DIAMS iQ without loss of functionality.

Client feedback and suggestions related to mobiQ are welcome at helpdesk@dennemeyer.com.

About DIAMS iQ
DIAMS iQ is Dennemeyer’s latest technological innovation in the software solutions area. This web-enabled intellectual asset management system combines the most valuable features of both a client-server solution and a web-based application. DIAMS iQ is highly configurable, user friendly and very compatible with existing IT infrastructures. The unique personalization options as well as the friendly design and multilingual interface have transformed DIAMS iQ into a success story right from the start. For more information on DIAMS iQ, please visit the DIAMS iQ dedicated page.



DIAMS iQ demo customers are invited to test and experience mobiQ, the DIAMS iQ version optimized for mobile devices, allowing searching and browsing through the DIAMS iQ database.

Search results can be displayed as a world map or as a list. Furthermore, simple statistics (e.g. number of applications per filing or registration year) are available through a menu.

The mobiQ web application supports touch screen functionalities such as zooming in/out gestures. mobiQ is platform and browser independent and can be used with any web browser such as Internet Explorer, Firefox Mozilla, Safari (mobile and desktop) and others.

Customers with active credentials for the DIAMS iQ demo system can access the system at https://iqdemo.dennemeyer.com:8099/mobiQ/, noting that the application is not intended to allow editing of assets.

In the future, this application will show the same functionality as our web application (WSS) for DIAMS classic, allowing more DIAMS classic users to switch to DIAMS iQ without loss of functionality.

Client feedback and suggestions related to mobiQ are welcome at helpdesk@dennemeyer.com.

About DIAMS iQ
DIAMS iQ is Dennemeyer’s latest technological innovation in the software solutions area. This web-enabled intellectual asset management system combines the most valuable features of both a client-server solution and a web-based application. DIAMS iQ is highly configurable, user friendly and very compatible with existing IT infrastructures. The unique personalization options as well as the friendly design and multilingual interface have transformed DIAMS iQ into a success story right from the start. For more information on DIAMS iQ, please visit the DIAMS iQ dedicated page.



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As many readers will be aware, significant changes to New Zealand’s patent laws will come into effect on September 13, 2014.

To avoid certain consequences of the changes, we recommend that anyone with planned, pending or granted patents in New Zealand consider, before this date:

  • entering the national phase of any PCT applications and filing any standard patent applications
  • filing any divisional patent applications from any existing patent applications
  • pre-paying any remaining renewal fees in respect of any granted patents.

We have previously written about the patentability changes which will be generally less favourable to patent applicants and patentees, when they come into effect.

As far as annuities are concerned, fees will become payable every year from the fourth anniversary of filing, and the fees will become payable regardless of whether a patent remains pending. Patentees can save on government fees by having any future annuities paid in advance before the laws come into effect. The government fee savings could add up to NZ$1,300 (€830) over the lifetime of a patent.

Existing clients with New Zealand annuities managed through Dennemeyer’s Patent Annuity Services may contact that group for specific advice on their cases. Other readers may contact Dennemeyer & Associates in Australia and New Zealand for further information.



As many readers will be aware, significant changes to New Zealand’s patent laws will come into effect on September 13, 2014.

To avoid certain consequences of the changes, we recommend that anyone with planned, pending or granted patents in New Zealand consider, before this date:

  • entering the national phase of any PCT applications and filing any standard patent applications
  • filing any divisional patent applications from any existing patent applications
  • pre-paying any remaining renewal fees in respect of any granted patents.

We have previously written about the patentability changes which will be generally less favourable to patent applicants and patentees, when they come into effect.

As far as annuities are concerned, fees will become payable every year from the fourth anniversary of filing, and the fees will become payable regardless of whether a patent remains pending. Patentees can save on government fees by having any future annuities paid in advance before the laws come into effect. The government fee savings could add up to NZ$1,300 (€830) over the lifetime of a patent.

Existing clients with New Zealand annuities managed through Dennemeyer’s Patent Annuity Services may contact that group for specific advice on their cases. Other readers may contact Dennemeyer & Associates in Australia and New Zealand for further information.



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Summary

The proprietor has a Japanese patent the terms of which have been extended on the grounds that there was a period during which the patented invention was unable to be implemented. This occurred due to difficulties in obtaining an approval for implementing a pharmaceutical product (first product) under the Pharmaceutical Affairs Law (first approval). The proprietor has obtained another approval under the Pharmaceutical Affairs Law (second approval) for a pharmaceutical product (second product) having the same active ingredient and efficacy as the first approved pharmaceutical product but with different dosage and administration.

Based on the second approval, the proprietor requested the second extension of the term to the Japanese Patent Office (JPO). Although the JPO rejected the request because of the existence of the first extension of the term, the Grand Panel of the Intellectual Property High Court (IPHC) accepted the request of the proprietor to extend the patent term based on the second approval (Grand Panel decision of 30 May 2014: 2013(Gyo-ke)10195, 2013(Gyo-ke)10196, 2013(Gyo-ke)10197, 2013(Gyo-ke)10198).

Extension of the patent term under the Japanese Patent Law

According to Article 67, paragraph 2 of Japanese Patent Law, when there is a period during which a patented invention is unable to be implemented, the term of the patent right may be extended, upon filing of an application to register a patent term extension, by a period not exceeding five years. The inability for implementation may occur in cases when it is necessary to obtain approvals or any other dispositions designated by the Cabinet Order1 under a law intended to ensure safety.

Factual Background

- Patent No: JP 3398382B, filed on 28 Oct. 1992, and granted on 14 Feb. 2003

- Proprietor: Genentech Inc.

- Title of the Invention: Vascular Endothelial Cell Growth Factor Antagonists

- Claims:

1. A composition for the treatment of cancer, comprising a therapeutically effective amount of a hVEGF antagonist which is an anti-VEGF antibody.

2-11. omitted (note: none of claims 2-11 defines the dosage of anti-VEGF antibody to be administered.)

The proprietor obtained an approval and certification in 2007, for manufacturing and selling the pharmaceutical products, under the Pharmaceutical Affairs Law with the following condition (first approval):

Drug (active ingredients): Bevacizumab (“Avastin” as product name)

Efficacy of the drug: Treatment for cancer of colon and rectum (which curative resection is impossible)

Dosage and administration of the drug: 5 mg/kg (weight) or 10 mg/kg (weight) per administration (intravenous administration). The administration interval is more than two weeks.

With regard to the first approval, the proprietor requested the extension of the patent term, and the term has been extended by about 4 years.

In addition to the first approval, the proprietor also obtained another approval and certification in 2009, for manufacturing and selling the pharmaceutical products, under the Pharmaceutical Affairs Law with the following condition (second approval):

Drug (active ingredients): Bevacizumab (“Avastin” as product name)

Efficacy of the drug: Treatment for cancer of colon and rectum (which curative resection is impossible)

Dosage and administration of the drug: 7.5 mg/kg (weight) per administration (intravenous administration). The administration interval is more than three weeks.

As can be seen, only the dosage of the active ingredient and its administration intervals of the second approval differ from those of the first approval.

There was a period during which a patented invention (whose dosage is 7.5 mg/kg (weight) per administration and whose administration interval is more than three weeks) was unable to be implemented because of obtaining the second approval. Therefore, the proprietor requested another extension of the patent term based on the second approval.

The Examining Board of the JPO rejected the request. The proprietor appealed against the Examining Board’s decision to the Board of Appeal (BoA) of the JPO. The BoA also rejected the request based on Article 67-3, paragraph (1), item (i)2.

Decision by the Board of Appeal

In the Appeal Decision, the BoA stated that:

  1. Although the pharmaceutical composition which has been approved under the Pharmaceutical Affairs Law is restricted to exactly the compositions described in the approval/certification (defined by active ingredients, efficacy, dosage and intervals, etc.), the patented invention is a technical idea defined by matters specifying the invention (technical features in claims). Therefore, the scopes defined by the approval/certificate and patented claims are different;
  2. Thus, “to implement the patent invention” in Article 67-3, paragraph 1, item (i) should not be restricted to the manufacture and/or sale of the exact pharmaceutical product which is approved/certified under the Pharmaceutical Affairs Law. It should be regarded as the manufacture and/or sale of a pharmaceutical product defined by the matters specifying the invention which overlap the features of the pharmaceutical product approved/certified;
  3. Consequently, the scope of the invention which is to be implemented by the first approval should be considered to the range defined by the matters specifying the claimed invention which overlap the features of the approved/certified pharmaceutical product.

Based on the above mentioned criteria, the BoA analysed the subject case.

The claims of the subject patent do not include the limitation of dosage and administration interval. Therefore, the matters specifying the invention which overlap the features of the approved/certified pharmaceutical product are: the composition comprising Bevacizumab which is used for the treatment of cancer of colon and rectum.

With regard to the second approval, the matters specifying the invention which overlap the features of the approved/certified pharmaceutical product are also the composition comprising Bevacizumab which is used for the treatment of cancer of colon and rectum. Therefore, the invention which was unbanned to be implemented by the second approval is regarded as the “the composition comprising Bevacizumab which is used for the treatment of cancer of colon and rectum”, without limitation of dosage and administration interval.

As a result, the scope of the pharmaceutical product which was unbanned to be implemented by the second approval is the same as that of the first product. That is, “the composition comprising Bevacizumab which is used for the treatment of cancer of colon and rectum” had already been permitted to be implemented by the first approval, and thus the BoA concluded that the second approval (the disposition designated by Cabinet Order under Article 67(2)) is not deemed to have been necessary to implement the patented invention, and the request for the second extension of the term should be rejected under Art. 67-3(1)(i).

The proprietor filed a lawsuit before the IPHC against the decision of the BoA, and the IPHC decided to review this case in Grand Panel (collegial body of five judges including four chief judges of each division of IPHC).

Decision by the Grand Panel of the IPHC

The purpose of the system to extend patent terms is to compensate for the disadvantage to the proprietor who was not able to implement the patented invention because there was a need to obtain approvals under a certain law.

Considering Article 67-3, paragraph 1, item (i), in light of mentioned purpose, it can be said that “the disposition designated by Cabinet Order under Art. 67(2) is deemed to have been necessary”, when:

  1. the implementation of the invention was unbanned by the disposition of Cabinet Order (it is impossible to judge that the first approval unbans the pharmaceutical product relating to the second approval); and
  2. the unbanned implementation of the invention includes the implementation of claimed inventions.

When obtaining an approval under the Pharmaceutical Affairs Law, “the name of the pharmaceutical, active ingredient and its structure, dosage, usage, efficacy, side effects, quality and safeness, etc.” must be examined (Art. 14(2)(iii) of Pharmaceutical Affairs Law). With the approval, only the examined pharmaceutical product (limited by its active ingredient and its structure, dosage, usage, efficacy, side effects, quality and safeness, etc.) is unbanned for its implementation, and the implementation of a broader scope (but within the scope of patented claims) cannot be unbanned. Therefore, considering the purpose of the system of extension of the patent term, the scope of the invention whose implementation is unbanned by the approval should be the same as the pharmaceutical product examined under the Pharmaceutical Affairs Law (the product defined by, in particular, active ingredient and its structure, dosage, usage, efficacy).

Therefore, the invention which could be implemented by the first approval should be regarded as:

Bevacizumab (“Avastin” as product name), having an efficacy for treating cancer of colon and rectum (which curative resection is impossible), for 5 mg/kg (weight) or 10 mg/kg (weight) per administration (intravenous administration), with administration interval of more than two weeks.

The implementation of

Bevacizumab (“Avastin” as product name), having the same efficacy for 7.5 mg/kg (weight) per administration (intravenous administration), with administration interval of more than three weeks

cannot be regarded to have been unbanned for its implementation by the first approval.

Consequently, the second product has not been unbanned for its implementation by the first approval, and thus the second approval was necessary to implement the second product. The decision by the BoA, which concluded that the second approval was not necessary to implement the second product, could not be justified and thus it was overturned.

 


1 The following dispositions are designated by the Cabinet Order:
- The registration of agricultural chemicals under the Agricultural Chemicals Regulation Law
- The approval and certification of drug products under the Pharmaceutical Affairs Law

2 Article 67-3, paragraph 1, item (i) of Japanese Patent Law:
“(1) Where an application for the registration of extension of the duration of a patent right falls under any of the following items, the examiner shall reject the application:
(i) where the disposition designated by Cabinet Order under Article 67(2) is not deemed to have been necessary to implement the patented invention;
”.

 

Summary

The proprietor has a Japanese patent the terms of which have been extended on the grounds that there was a period during which the patented invention was unable to be implemented. This occurred due to difficulties in obtaining an approval for implementing a pharmaceutical product (first product) under the Pharmaceutical Affairs Law (first approval). The proprietor has obtained another approval under the Pharmaceutical Affairs Law (second approval) for a pharmaceutical product (second product) having the same active ingredient and efficacy as the first approved pharmaceutical product but with different dosage and administration.

Based on the second approval, the proprietor requested the second extension of the term to the Japanese Patent Office (JPO). Although the JPO rejected the request because of the existence of the first extension of the term, the Grand Panel of the Intellectual Property High Court (IPHC) accepted the request of the proprietor to extend the patent term based on the second approval (Grand Panel decision of 30 May 2014: 2013(Gyo-ke)10195, 2013(Gyo-ke)10196, 2013(Gyo-ke)10197, 2013(Gyo-ke)10198).

Extension of the patent term under the Japanese Patent Law

According to Article 67, paragraph 2 of Japanese Patent Law, when there is a period during which a patented invention is unable to be implemented, the term of the patent right may be extended, upon filing of an application to register a patent term extension, by a period not exceeding five years. The inability for implementation may occur in cases when it is necessary to obtain approvals or any other dispositions designated by the Cabinet Order1 under a law intended to ensure safety.

Factual Background

- Patent No: JP 3398382B, filed on 28 Oct. 1992, and granted on 14 Feb. 2003

- Proprietor: Genentech Inc.

- Title of the Invention: Vascular Endothelial Cell Growth Factor Antagonists

- Claims:

1. A composition for the treatment of cancer, comprising a therapeutically effective amount of a hVEGF antagonist which is an anti-VEGF antibody.

2-11. omitted (note: none of claims 2-11 defines the dosage of anti-VEGF antibody to be administered.)

The proprietor obtained an approval and certification in 2007, for manufacturing and selling the pharmaceutical products, under the Pharmaceutical Affairs Law with the following condition (first approval):

Drug (active ingredients): Bevacizumab (“Avastin” as product name)

Efficacy of the drug: Treatment for cancer of colon and rectum (which curative resection is impossible)

Dosage and administration of the drug: 5 mg/kg (weight) or 10 mg/kg (weight) per administration (intravenous administration). The administration interval is more than two weeks.

With regard to the first approval, the proprietor requested the extension of the patent term, and the term has been extended by about 4 years.

In addition to the first approval, the proprietor also obtained another approval and certification in 2009, for manufacturing and selling the pharmaceutical products, under the Pharmaceutical Affairs Law with the following condition (second approval):

Drug (active ingredients): Bevacizumab (“Avastin” as product name)

Efficacy of the drug: Treatment for cancer of colon and rectum (which curative resection is impossible)

Dosage and administration of the drug: 7.5 mg/kg (weight) per administration (intravenous administration). The administration interval is more than three weeks.

As can be seen, only the dosage of the active ingredient and its administration intervals of the second approval differ from those of the first approval.

There was a period during which a patented invention (whose dosage is 7.5 mg/kg (weight) per administration and whose administration interval is more than three weeks) was unable to be implemented because of obtaining the second approval. Therefore, the proprietor requested another extension of the patent term based on the second approval.

The Examining Board of the JPO rejected the request. The proprietor appealed against the Examining Board’s decision to the Board of Appeal (BoA) of the JPO. The BoA also rejected the request based on Article 67-3, paragraph (1), item (i)2.

Decision by the Board of Appeal

In the Appeal Decision, the BoA stated that:

  1. Although the pharmaceutical composition which has been approved under the Pharmaceutical Affairs Law is restricted to exactly the compositions described in the approval/certification (defined by active ingredients, efficacy, dosage and intervals, etc.), the patented invention is a technical idea defined by matters specifying the invention (technical features in claims). Therefore, the scopes defined by the approval/certificate and patented claims are different;
  2. Thus, “to implement the patent invention” in Article 67-3, paragraph 1, item (i) should not be restricted to the manufacture and/or sale of the exact pharmaceutical product which is approved/certified under the Pharmaceutical Affairs Law. It should be regarded as the manufacture and/or sale of a pharmaceutical product defined by the matters specifying the invention which overlap the features of the pharmaceutical product approved/certified;
  3. Consequently, the scope of the invention which is to be implemented by the first approval should be considered to the range defined by the matters specifying the claimed invention which overlap the features of the approved/certified pharmaceutical product.

Based on the above mentioned criteria, the BoA analysed the subject case.

The claims of the subject patent do not include the limitation of dosage and administration interval. Therefore, the matters specifying the invention which overlap the features of the approved/certified pharmaceutical product are: the composition comprising Bevacizumab which is used for the treatment of cancer of colon and rectum.

With regard to the second approval, the matters specifying the invention which overlap the features of the approved/certified pharmaceutical product are also the composition comprising Bevacizumab which is used for the treatment of cancer of colon and rectum. Therefore, the invention which was unbanned to be implemented by the second approval is regarded as the “the composition comprising Bevacizumab which is used for the treatment of cancer of colon and rectum”, without limitation of dosage and administration interval.

As a result, the scope of the pharmaceutical product which was unbanned to be implemented by the second approval is the same as that of the first product. That is, “the composition comprising Bevacizumab which is used for the treatment of cancer of colon and rectum” had already been permitted to be implemented by the first approval, and thus the BoA concluded that the second approval (the disposition designated by Cabinet Order under Article 67(2)) is not deemed to have been necessary to implement the patented invention, and the request for the second extension of the term should be rejected under Art. 67-3(1)(i).

The proprietor filed a lawsuit before the IPHC against the decision of the BoA, and the IPHC decided to review this case in Grand Panel (collegial body of five judges including four chief judges of each division of IPHC).

Decision by the Grand Panel of the IPHC

The purpose of the system to extend patent terms is to compensate for the disadvantage to the proprietor who was not able to implement the patented invention because there was a need to obtain approvals under a certain law.

Considering Article 67-3, paragraph 1, item (i), in light of mentioned purpose, it can be said that “the disposition designated by Cabinet Order under Art. 67(2) is deemed to have been necessary”, when:

  1. the implementation of the invention was unbanned by the disposition of Cabinet Order (it is impossible to judge that the first approval unbans the pharmaceutical product relating to the second approval); and
  2. the unbanned implementation of the invention includes the implementation of claimed inventions.

When obtaining an approval under the Pharmaceutical Affairs Law, “the name of the pharmaceutical, active ingredient and its structure, dosage, usage, efficacy, side effects, quality and safeness, etc.” must be examined (Art. 14(2)(iii) of Pharmaceutical Affairs Law). With the approval, only the examined pharmaceutical product (limited by its active ingredient and its structure, dosage, usage, efficacy, side effects, quality and safeness, etc.) is unbanned for its implementation, and the implementation of a broader scope (but within the scope of patented claims) cannot be unbanned. Therefore, considering the purpose of the system of extension of the patent term, the scope of the invention whose implementation is unbanned by the approval should be the same as the pharmaceutical product examined under the Pharmaceutical Affairs Law (the product defined by, in particular, active ingredient and its structure, dosage, usage, efficacy).

Therefore, the invention which could be implemented by the first approval should be regarded as:

Bevacizumab (“Avastin” as product name), having an efficacy for treating cancer of colon and rectum (which curative resection is impossible), for 5 mg/kg (weight) or 10 mg/kg (weight) per administration (intravenous administration), with administration interval of more than two weeks.

The implementation of

Bevacizumab (“Avastin” as product name), having the same efficacy for 7.5 mg/kg (weight) per administration (intravenous administration), with administration interval of more than three weeks

cannot be regarded to have been unbanned for its implementation by the first approval.

Consequently, the second product has not been unbanned for its implementation by the first approval, and thus the second approval was necessary to implement the second product. The decision by the BoA, which concluded that the second approval was not necessary to implement the second product, could not be justified and thus it was overturned.

 


1 The following dispositions are designated by the Cabinet Order:
- The registration of agricultural chemicals under the Agricultural Chemicals Regulation Law
- The approval and certification of drug products under the Pharmaceutical Affairs Law

2 Article 67-3, paragraph 1, item (i) of Japanese Patent Law:
“(1) Where an application for the registration of extension of the duration of a patent right falls under any of the following items, the examiner shall reject the application:
(i) where the disposition designated by Cabinet Order under Article 67(2) is not deemed to have been necessary to implement the patented invention;
”.

 

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The link between color, black and white (B&W) and greyscale trademarks and their respective scope of protection has been extensively and regularly discussed. Recently, the OHIM in Alicante and the participating trademark offices identified three essential questions and have agreed and adopted on April 15, 2014, a new Common Practice1 with regard to B&W or greyscale marks as compared to colored versions of the same sign.

1. Can a color trademark application claim priority of an earlier B&W or greyscale trademark?

When assessing priority claims, the previous practice of the Office was to object if there was any difference in the appearance of the marks such as the presentation in differing colors.

According to the adopted Common Practice, a trademark registered in B&W or greyscale, from which priority is claimed, will generally still not be considered identical to the same mark applied in color.

However, the scope of what is considered “identity” is now broader and if the differences in color or in the greyscale are so insignificant that they could go unnoticed by the average consumer, the marks will be considered identical.

Conclusion:

In the context of a priority claim, a trademark owner applying for a color trademark cannot claim priority from a B&W mark “unless” the addition of color is to be considered as an “insignificant” change that would go “unnoticed by average consumers”.

Numerous examples of acceptable priority claims have been added to the OHIM guidelines.

2. Can an earlier registered B&W or greyscale trademark be considered identical to a contested color trademark application?

Similar to the assessment for the priority claim, the Office considers that the differences between an earlier B&W or greyscale mark and a colored version of the same sign will normally be noticed by the average consumer and thus the marks shall not be considered identical.

Again, it is only under exceptional circumstances that the earlier B&W registration and the contested color application will be considered identical, namely where the differences in the colors or in the contrast of shades are so “insignificant” that a reasonably observant consumer will perceive them only by direct comparison of the marks side by side.

Therefore, for the marks to be considered identical, the differences in color of the signs in question must be “negligible and hardly noticeable to an average consumer” (as confirmed on 09/04/2014, by judgment of the General Court No. T-623/11, “Pico Food vs OHIM”).

Conclusion:

In the context of an opposition proceeding, the Court considered that an earlier registered B&W trademark does not cover all colors and, thus, confirmed the findings of the Common Practice that the difference between a prior mark in B&W and the same mark in color must be so “insignificant” it could go “unnoticed by the average consumer”.

In other words, instead of showing the trademarks to be identical, an opponent shall rather prove that there is a likelihood of confusion between a prior registered B&W or greyscale trademark and the same or similar mark applied in color.

3. Does the use of a color trademark constitute valid use of the same registered in B&W or greyscale?

The agreed practice does not change the former Office practice, concerning the question whether use of a registered B&W and/or greyscale trademark which was used in color (or vice-versa) is acceptable under Article 15 CTMR, but only clarifies the criteria that changes in color must fulfill in order “not to alter the distinctive character” of the trademark as registered:

  • the word/figurative elements coincide and are the most distinctive
  • the contrast of shades is respected
  • the color or combination of colors does not have distinctive character in itself
  • the color is not one of the main contributors to the overall distinctiveness.

Conclusion:

In the context of evidencing the use of a trademark, the use of a mark in color will only constitute genuine use of a B&W registered mark if the color does “not alter the distinctive character” of the mark.

Trademark owners of B&W or greyscale trademarks will have to show that the layout is identical, the contrasts or shading are substantially the same for both versions of the sign and the color is not a key distinctive element.

The practical impact

The Common Practice entails major changes with regard to priority, as the Office will in the future accept priority claims that it previously would have objected to.

Concerning filing and enforcement strategies, the practice according to which a logo registered in B&W or greyscale was considered sufficient to protect versions of the logo in any color is now outdated.

Therefore, trademark owners should carefully review their portfolio in order to identify assets where color is a key element and eventually proceed with subsequent color filings of their earlier B&W or greyscale registered trademarks.

For future filings, trademark owners should carefully determine together with their marketing department and legal counsel whether color is a key distinctive element and key part of their brand equity. In the affirmative, trademark owners should proactively consider registering these marks in color as well as B&W in order to take into account the distinctive character of the color in eventual opposition or cancellation proceedings.

The risk for trademark owners of relying on B&W trademarks is that the scope of protection of their trademarks in opposition proceedings won’t reach protection against color trademarks and that their earlier registered B&W or greyscale trademarks might be vulnerable to non-use.

With this evolution and the previous evolution concerning the scope of protection of class headings in the “IP Translator” case (19/06/2012, CJUE Case No. C-307/10), the OHIM draws step by step the future European trademark practice heading towards the principle “what you apply for is what you get”!

The link between color, black and white (B&W) and greyscale trademarks and their respective scope of protection has been extensively and regularly discussed. Recently, the OHIM in Alicante and the participating trademark offices identified three essential questions and have agreed and adopted on April 15, 2014, a new Common Practice1 with regard to B&W or greyscale marks as compared to colored versions of the same sign.

1. Can a color trademark application claim priority of an earlier B&W or greyscale trademark?

When assessing priority claims, the previous practice of the Office was to object if there was any difference in the appearance of the marks such as the presentation in differing colors.

According to the adopted Common Practice, a trademark registered in B&W or greyscale, from which priority is claimed, will generally still not be considered identical to the same mark applied in color.

However, the scope of what is considered “identity” is now broader and if the differences in color or in the greyscale are so insignificant that they could go unnoticed by the average consumer, the marks will be considered identical.

Conclusion:

In the context of a priority claim, a trademark owner applying for a color trademark cannot claim priority from a B&W mark “unless” the addition of color is to be considered as an “insignificant” change that would go “unnoticed by average consumers”.

Numerous examples of acceptable priority claims have been added to the OHIM guidelines.

2. Can an earlier registered B&W or greyscale trademark be considered identical to a contested color trademark application?

Similar to the assessment for the priority claim, the Office considers that the differences between an earlier B&W or greyscale mark and a colored version of the same sign will normally be noticed by the average consumer and thus the marks shall not be considered identical.

Again, it is only under exceptional circumstances that the earlier B&W registration and the contested color application will be considered identical, namely where the differences in the colors or in the contrast of shades are so “insignificant” that a reasonably observant consumer will perceive them only by direct comparison of the marks side by side.

Therefore, for the marks to be considered identical, the differences in color of the signs in question must be “negligible and hardly noticeable to an average consumer” (as confirmed on 09/04/2014, by judgment of the General Court No. T-623/11, “Pico Food vs OHIM”).

Conclusion:

In the context of an opposition proceeding, the Court considered that an earlier registered B&W trademark does not cover all colors and, thus, confirmed the findings of the Common Practice that the difference between a prior mark in B&W and the same mark in color must be so “insignificant” it could go “unnoticed by the average consumer”.

In other words, instead of showing the trademarks to be identical, an opponent shall rather prove that there is a likelihood of confusion between a prior registered B&W or greyscale trademark and the same or similar mark applied in color.

3. Does the use of a color trademark constitute valid use of the same registered in B&W or greyscale?

The agreed practice does not change the former Office practice, concerning the question whether use of a registered B&W and/or greyscale trademark which was used in color (or vice-versa) is acceptable under Article 15 CTMR, but only clarifies the criteria that changes in color must fulfill in order “not to alter the distinctive character” of the trademark as registered:

  • the word/figurative elements coincide and are the most distinctive
  • the contrast of shades is respected
  • the color or combination of colors does not have distinctive character in itself
  • the color is not one of the main contributors to the overall distinctiveness.

Conclusion:

In the context of evidencing the use of a trademark, the use of a mark in color will only constitute genuine use of a B&W registered mark if the color does “not alter the distinctive character” of the mark.

Trademark owners of B&W or greyscale trademarks will have to show that the layout is identical, the contrasts or shading are substantially the same for both versions of the sign and the color is not a key distinctive element.

The practical impact

The Common Practice entails major changes with regard to priority, as the Office will in the future accept priority claims that it previously would have objected to.

Concerning filing and enforcement strategies, the practice according to which a logo registered in B&W or greyscale was considered sufficient to protect versions of the logo in any color is now outdated.

Therefore, trademark owners should carefully review their portfolio in order to identify assets where color is a key element and eventually proceed with subsequent color filings of their earlier B&W or greyscale registered trademarks.

For future filings, trademark owners should carefully determine together with their marketing department and legal counsel whether color is a key distinctive element and key part of their brand equity. In the affirmative, trademark owners should proactively consider registering these marks in color as well as B&W in order to take into account the distinctive character of the color in eventual opposition or cancellation proceedings.

The risk for trademark owners of relying on B&W trademarks is that the scope of protection of their trademarks in opposition proceedings won’t reach protection against color trademarks and that their earlier registered B&W or greyscale trademarks might be vulnerable to non-use.

With this evolution and the previous evolution concerning the scope of protection of class headings in the “IP Translator” case (19/06/2012, CJUE Case No. C-307/10), the OHIM draws step by step the future European trademark practice heading towards the principle “what you apply for is what you get”!

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The commercial opens - a sweeping view of the familiar Rio de Janeiro coastline and a conversation between Neymar Sr and his son, current Brazilian soccer star, Neymar Jr. “Today is another important day in our lives,” says Neymar Sr. What day is this? As Neymar Jr and other athletes go through their pre-game rituals: washing their feet, practicing with the soccer ball, praying, and of course, listening to music on their Beats By Dre headphones. The assumption is that this “important day” is the start of the 2014 FIFA World Cup in Brazil, but the commercial never mentions the event specifically.

During the 2010 FIFA World Cup in South Africa, specifically the Netherlands versus Denmark game, a group of three dozen young women were escorted out of the stadium and two were arrested. Why? The women violated the South African Contravention of Merchandise Act, a law that prohibited ambush marketing. They were part of the Bavaria, a Dutch beer company, campaign and were there dressed in matching orange dresses to promote the brand at one of the world’s largest sporting events.

Both marketing campaigns are examples of ambush marketing. The World Cup Law, passed in Brazil to govern the FIFA Confederations Cup 2013 and FIFA World Cup 2014, identifies these as “ambush marketing by association” and “ambush marketing by intrusion”.

The Brazilian World Cup Law defines ambush marketing by association as activities where a party utilises “trademarks, products or services, with the purpose of obtaining economic or marketing advantage, by means of direct or indirect association with [e]vents or [o]fficial [s]ymbols…”

Ambush marketing by intrusion refers to activities that are meant to attract public attention inside the official venues of events.

Recently, ambush marketing has appeared at a variety of sporting events, from the Olympic Games to World Cup matches, Super Bowls, and billboard advertisements around stadia. The purpose is to capitalise on the millions of people watching these events. According to Forbes, the 2014 FIFA World Cup was expected to attract the attention of 3.2 billion people worldwide. Forbes estimated that “with 64 matches and assuming that 3.2 billion people watch one entire game, the whole tournament will garner 770 billion minutes of attention”. These are valuable minutes and companies plan elaborate advertising campaigns to capture the attention of this broad audience.

Read the full article in the IPPro The Internet magazine - issue 47 - PDF article attached. To view the full online magazine issue, click here.



The commercial opens - a sweeping view of the familiar Rio de Janeiro coastline and a conversation between Neymar Sr and his son, current Brazilian soccer star, Neymar Jr. “Today is another important day in our lives,” says Neymar Sr. What day is this? As Neymar Jr and other athletes go through their pre-game rituals: washing their feet, practicing with the soccer ball, praying, and of course, listening to music on their Beats By Dre headphones. The assumption is that this “important day” is the start of the 2014 FIFA World Cup in Brazil, but the commercial never mentions the event specifically.

During the 2010 FIFA World Cup in South Africa, specifically the Netherlands versus Denmark game, a group of three dozen young women were escorted out of the stadium and two were arrested. Why? The women violated the South African Contravention of Merchandise Act, a law that prohibited ambush marketing. They were part of the Bavaria, a Dutch beer company, campaign and were there dressed in matching orange dresses to promote the brand at one of the world’s largest sporting events.

Both marketing campaigns are examples of ambush marketing. The World Cup Law, passed in Brazil to govern the FIFA Confederations Cup 2013 and FIFA World Cup 2014, identifies these as “ambush marketing by association” and “ambush marketing by intrusion”.

The Brazilian World Cup Law defines ambush marketing by association as activities where a party utilises “trademarks, products or services, with the purpose of obtaining economic or marketing advantage, by means of direct or indirect association with [e]vents or [o]fficial [s]ymbols…”

Ambush marketing by intrusion refers to activities that are meant to attract public attention inside the official venues of events.

Recently, ambush marketing has appeared at a variety of sporting events, from the Olympic Games to World Cup matches, Super Bowls, and billboard advertisements around stadia. The purpose is to capitalise on the millions of people watching these events. According to Forbes, the 2014 FIFA World Cup was expected to attract the attention of 3.2 billion people worldwide. Forbes estimated that “with 64 matches and assuming that 3.2 billion people watch one entire game, the whole tournament will garner 770 billion minutes of attention”. These are valuable minutes and companies plan elaborate advertising campaigns to capture the attention of this broad audience.

Read the full article in the IPPro The Internet magazine - issue 47 - PDF article attached. To view the full online magazine issue, click here.



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Recital 5 in the preamble to European Council Regulation No 1383/2003 of July 22, 2003, concerning customs action against goods suspected of infringing certain IP rights, and the measures to be taken against goods found to have infringed such rights, stated that “action by the customs authorities should involve, for the period necessary to determine whether suspect goods are indeed counterfeit goods, pirated goods or goods infringing certain intellectual property rights, suspending release for free circulation, export and re-export or … detaining those goods.”

Th‚e basic procedure was that if within ten working days of receipt of the notification of suspension of release or of  detention, the customs authorities had not been notified that proceedings had been initiated  to determine whether an IP right had been infringed or had not received the right holder’s agreement where applicable, release of the goods should be granted or their detention should be ended, as appropriate, subject to completion of all customs formalities.

The new regulation

Th‚e  new  European  Regulation  No  608/2013, dated June 12, 2013, which entered into force on January 1, 2014, concerning customs enforcement of IP rights and repealing Regulation 1383/2003, clearly marked an increase in the powers of the customs authorities and introduced, among other things, the right of customs authorities to destroy small parcels without having to obtain the consent of the IP right holder every time.

Th‚is power is applicable when the owner of the IP rights requests customs intervention and allows the customs administration to proceed to the destruction of small parcels without being asked for authorisation. However, this procedure still requires the consent of the declaring party or the proprietor of the parcel in that case.

Please read the full article on the World IP Review magazine website.



Recital 5 in the preamble to European Council Regulation No 1383/2003 of July 22, 2003, concerning customs action against goods suspected of infringing certain IP rights, and the measures to be taken against goods found to have infringed such rights, stated that “action by the customs authorities should involve, for the period necessary to determine whether suspect goods are indeed counterfeit goods, pirated goods or goods infringing certain intellectual property rights, suspending release for free circulation, export and re-export or … detaining those goods.”

Th‚e basic procedure was that if within ten working days of receipt of the notification of suspension of release or of  detention, the customs authorities had not been notified that proceedings had been initiated  to determine whether an IP right had been infringed or had not received the right holder’s agreement where applicable, release of the goods should be granted or their detention should be ended, as appropriate, subject to completion of all customs formalities.

The new regulation

Th‚e  new  European  Regulation  No  608/2013, dated June 12, 2013, which entered into force on January 1, 2014, concerning customs enforcement of IP rights and repealing Regulation 1383/2003, clearly marked an increase in the powers of the customs authorities and introduced, among other things, the right of customs authorities to destroy small parcels without having to obtain the consent of the IP right holder every time.

Th‚is power is applicable when the owner of the IP rights requests customs intervention and allows the customs administration to proceed to the destruction of small parcels without being asked for authorisation. However, this procedure still requires the consent of the declaring party or the proprietor of the parcel in that case.

Please read the full article on the World IP Review magazine website.



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Edward Chalfie, Dennemeyer U.S. attorney, and Olivier Lombardo, attorney at Dennemeyer in Luxembourg have been quoted in Bloomberg news article “Nissan’s Infiniti Seeks U.S. Trademark for Formula 1 Bend.”

The article reviews Nissan’s trademark application for “Eau Rouge”, currently being considered by the U.S. Patent and Trademark Office. “Eau Rouge” is a Formula 1 uphill racetrack bend at the Spa-Francorchamps circuit located in Belgium.

While Nissan’s intention is to make use of the ”Eau Rouge” trademark for one of its luxury cars currently under development (called Infinity), this could entitle the Wallonian government owning the circuit to receive compensation from any sales of the car, according to Edward Chalfie.

Read the full article on the Bloomberg website.



Edward Chalfie, Dennemeyer U.S. attorney, and Olivier Lombardo, attorney at Dennemeyer in Luxembourg have been quoted in Bloomberg news article “Nissan’s Infiniti Seeks U.S. Trademark for Formula 1 Bend.”

The article reviews Nissan’s trademark application for “Eau Rouge”, currently being considered by the U.S. Patent and Trademark Office. “Eau Rouge” is a Formula 1 uphill racetrack bend at the Spa-Francorchamps circuit located in Belgium.

While Nissan’s intention is to make use of the ”Eau Rouge” trademark for one of its luxury cars currently under development (called Infinity), this could entitle the Wallonian government owning the circuit to receive compensation from any sales of the car, according to Edward Chalfie.

Read the full article on the Bloomberg website.



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Dubai Customs and Police authorities have once more proven to be a sharp sword in the combat of counterfeiting in the UAE. As has been reported by Customs officials, the amount of seizures for the first half of 2014 already amounted to 139 different kinds of products with an estimated value of 3,5 million EURO, including apparel, mobile phones and accessories, automotive spare parts, watches, and sunglasses. In the month of August alone, Dubai Police’s Criminal Investigations Department (CID) seized 60,000 fake mobile phones worth € 10 million.

The increasing success is, on one hand, due to the improved training of the inspecting staff, and on the other, owed to the employment of modern electronic means. Here, a so-called “risk engine” has recently been activated, which practically is an algorithm that is fed with data from various resources enabling it to identify suspected shipments with a high level of accuracy.

Dennemeyer strongly encourages its clients to take advantage of the enhanced anti-counterfeiting possibilities and to file their trademarks with the local Customs.

 

Dubai Customs and Police authorities have once more proven to be a sharp sword in the combat of counterfeiting in the UAE. As has been reported by Customs officials, the amount of seizures for the first half of 2014 already amounted to 139 different kinds of products with an estimated value of 3,5 million EURO, including apparel, mobile phones and accessories, automotive spare parts, watches, and sunglasses. In the month of August alone, Dubai Police’s Criminal Investigations Department (CID) seized 60,000 fake mobile phones worth € 10 million.

The increasing success is, on one hand, due to the improved training of the inspecting staff, and on the other, owed to the employment of modern electronic means. Here, a so-called “risk engine” has recently been activated, which practically is an algorithm that is fed with data from various resources enabling it to identify suspected shipments with a high level of accuracy.

Dennemeyer strongly encourages its clients to take advantage of the enhanced anti-counterfeiting possibilities and to file their trademarks with the local Customs.

 

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Dennemeyer & Associates is pleased to announce that Mr. Thomas L. Lederer has recently joined the team of patent attorneys in our Munich office. His focus is on advising clients in German and European patent law and providing knowledge in areas such as information and computer technology, telecommunications, software, computer-implemented inventions, traffic engineering, electrical technology, electronics, physics and mechanics.

Tom studied Physics, Mechanical Engineering and Informatics at the Ludwig-Maximilians-Universität München (LMU Munich) and the Technische Universität Berlin. He holds a German equivalent of a Master's level degree in Informatics (Diplom-Informatiker Univ.) from the LMU Munich. During his studies, he worked for several clients as a freelance consultant and as a software developer.

In 2007, Tom started his journey in the field of intellectual property by joining a leading IP law firm in Germany as a Patent Attorney candidate, where he received training in German as well as European patent law.

During his training, Tom completed an optional internship at the Higher Regional Court Munich and the obligatory internship (i.e. "Amtsjahr") at the German PTO (DPMA) and the German Federal Patent Court.

Since 2011, Tom has worked as a freelance patent engineer. In 2012, he joined a global provider of professional messaging solutions headquartered in Munich as Intellectual Property Counsel, managing all IP related matters of the company’s worldwide locations.

“Tom’s background brings additional depth of experience and a unique point of view to our clients.” explained Dr. Robert Fichter, Director of Dennemeyer & Associates. “We are excited to welcome him to our team in Munich.”

Tom is fluent in German and English and has basic knowledge in Italian, French and Japanese. For any inquiries, please contact Tom at tlederer@dennemeyer-law.com or +49 89 66068840-29.

Dennemeyer & Associates is pleased to announce that Mr. Thomas L. Lederer has recently joined the team of patent attorneys in our Munich office. His focus is on advising clients in German and European patent law and providing knowledge in areas such as information and computer technology, telecommunications, software, computer-implemented inventions, traffic engineering, electrical technology, electronics, physics and mechanics.

Tom studied Physics, Mechanical Engineering and Informatics at the Ludwig-Maximilians-Universität München (LMU Munich) and the Technische Universität Berlin. He holds a German equivalent of a Master's level degree in Informatics (Diplom-Informatiker Univ.) from the LMU Munich. During his studies, he worked for several clients as a freelance consultant and as a software developer.

In 2007, Tom started his journey in the field of intellectual property by joining a leading IP law firm in Germany as a Patent Attorney candidate, where he received training in German as well as European patent law.

During his training, Tom completed an optional internship at the Higher Regional Court Munich and the obligatory internship (i.e. "Amtsjahr") at the German PTO (DPMA) and the German Federal Patent Court.

Since 2011, Tom has worked as a freelance patent engineer. In 2012, he joined a global provider of professional messaging solutions headquartered in Munich as Intellectual Property Counsel, managing all IP related matters of the company’s worldwide locations.

“Tom’s background brings additional depth of experience and a unique point of view to our clients.” explained Dr. Robert Fichter, Director of Dennemeyer & Associates. “We are excited to welcome him to our team in Munich.”

Tom is fluent in German and English and has basic knowledge in Italian, French and Japanese. For any inquiries, please contact Tom at tlederer@dennemeyer-law.com or +49 89 66068840-29.

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South Sudan formally declared its independence from Sudan on 9 July 2011. The Republic of South Sudan was established after holding a referendum resulting in this population gaining their total independence. Following this, all existing trademark registrations in Sudan immediately stopped having effect in this new country, South Sudan, as of this date.

The South Sudan Ministry of Justice has recently declared that the first Sudanese Trade Marks Act remains applicable until the draft of a new Trade Marks Bill is finished and accepted by the parliament. Therefore, individuals and companies that require trademark protection in this new jurisdiction are now given the opportunity to file applications with the Ministry of Justice.

Regarding the fact that all trademarks will soon be enforceable under the new trademark law in South Sudan, it is highly recommended that trademark owners already begin to seek trademark protection in this new jurisdiction.

We would be pleased to support you in ensuring the protection of your trademarks in South Sudan and to answer any question that may arise following this change. For any inquiries, we invite you to contact us at info@dennemeyer-law.com or +352 276115-100.

South Sudan formally declared its independence from Sudan on 9 July 2011. The Republic of South Sudan was established after holding a referendum resulting in this population gaining their total independence. Following this, all existing trademark registrations in Sudan immediately stopped having effect in this new country, South Sudan, as of this date.

The South Sudan Ministry of Justice has recently declared that the first Sudanese Trade Marks Act remains applicable until the draft of a new Trade Marks Bill is finished and accepted by the parliament. Therefore, individuals and companies that require trademark protection in this new jurisdiction are now given the opportunity to file applications with the Ministry of Justice.

Regarding the fact that all trademarks will soon be enforceable under the new trademark law in South Sudan, it is highly recommended that trademark owners already begin to seek trademark protection in this new jurisdiction.

We would be pleased to support you in ensuring the protection of your trademarks in South Sudan and to answer any question that may arise following this change. For any inquiries, we invite you to contact us at info@dennemeyer-law.com or +352 276115-100.

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New Zealand has new patent laws, enacted under the Patents Act 2013. Most stakeholders have welcomed this new Act as, in many respects, it brings the New Zealand patent system into line with those of its major trading partners. From a patent applicant’s perspective, however, most of the changes will make it more difficult to obtain and defend a granted patent.

There remains a limited window of time within which patent applicants have the ability to file applications in respect of which the old Patents Act 1953 will continue to apply.

Changes

We tabulate below the main differences between the Acts. As well as making the patenting requirements more stringent, the new Act introduces some important administrative changes. For example, applicants will now be required to file a formal request for examination (as in Australia). Although the New Zealand regulations setting out some of the details of the changes have yet to be published in final form, it is likely that applicants will be required to request examination by the earliest of:

  • two months after the Patent Office issues a Direction to Request Examination
  • five years after the filing date of the complete application (which, for national phase entry applications is the international filing date).

Changes to the annuities provisions are also significant and include the introduction of pre-grant “maintenance fees” (again, as in Australia). We will cover annuities in more detail in a separate publication.

Transition

In general terms, the new Act will apply to:

  • national phase entry applications of international (PCT) applications and other complete applications, filed from 13 September 2014
  • patents granted from the above applications
  • patents granted under the old Act, with the exception that the revocation provisions of the old Act will continue to apply.

The old Act will continue to apply to pending complete applications:

  • validly filed before 13 September 2014
  • filed from 13 September 2014 but divided from an application validly filed before that date.

Preparing for the New Act

Clients with patent interests in New Zealand should therefore consider, before 13 September 2014:

  • entering the national phase of any PCT applications (before the 31 month deadline, if necessary) and filing any other complete applications
  • filing any divisional applications from any existing complete applications.

All attorneys in Dennemeyer & Associate’s Australian office are registered to practice in New Zealand. Please contact our office at info-au@dennemeyer-law.com or +613 8658 6090 for tailored advice on maximising your New Zealand patent position through this time of significant change.

+613 8658 6090

New Zealand has new patent laws, enacted under the Patents Act 2013. Most stakeholders have welcomed this new Act as, in many respects, it brings the New Zealand patent system into line with those of its major trading partners. From a patent applicant’s perspective, however, most of the changes will make it more difficult to obtain and defend a granted patent.

There remains a limited window of time within which patent applicants have the ability to file applications in respect of which the old Patents Act 1953 will continue to apply.

Changes

We tabulate below the main differences between the Acts. As well as making the patenting requirements more stringent, the new Act introduces some important administrative changes. For example, applicants will now be required to file a formal request for examination (as in Australia). Although the New Zealand regulations setting out some of the details of the changes have yet to be published in final form, it is likely that applicants will be required to request examination by the earliest of:

  • two months after the Patent Office issues a Direction to Request Examination
  • five years after the filing date of the complete application (which, for national phase entry applications is the international filing date).

Changes to the annuities provisions are also significant and include the introduction of pre-grant “maintenance fees” (again, as in Australia). We will cover annuities in more detail in a separate publication.

Transition

In general terms, the new Act will apply to:

  • national phase entry applications of international (PCT) applications and other complete applications, filed from 13 September 2014
  • patents granted from the above applications
  • patents granted under the old Act, with the exception that the revocation provisions of the old Act will continue to apply.

The old Act will continue to apply to pending complete applications:

  • validly filed before 13 September 2014
  • filed from 13 September 2014 but divided from an application validly filed before that date.

Preparing for the New Act

Clients with patent interests in New Zealand should therefore consider, before 13 September 2014:

  • entering the national phase of any PCT applications (before the 31 month deadline, if necessary) and filing any other complete applications
  • filing any divisional applications from any existing complete applications.

All attorneys in Dennemeyer & Associate’s Australian office are registered to practice in New Zealand. Please contact our office at info-au@dennemeyer-law.com or +613 8658 6090 for tailored advice on maximising your New Zealand patent position through this time of significant change.

+613 8658 6090

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On 1 July 2014, a new Rule 66.1ter and an amended Rule 70.2(f) Patent Cooperation Treaty (PCT) entered into force. Due to these new provisions, the European Patent Office (EPO) in its function as an International Preliminary Examination Authority (IPEA) for Chapter II PCT procedures will conduct a "top-up" search to find prior art that was published or became available after the date on which the international search report was established.

In a notice from the European Patent Office, the following key aspects of this "top-up" search are highlighted:

(i) The EPO will conduct a "top-up" search at the start of the Chapter II PCT procedure, and no express request by the applicant is required in this respect.

(ii) The "top-up" search will mainly focus on finding intermediate prior art documents that have become public since the international search was performed which could become relevant under Article 54(3) European Patent Convention in the European phase. The search will also cover prior art that was cited in national proceedings for the same application if such documents became available to the EPO.

(iii) The "top-up" search will not extend beyond the subject-matter searched by the International Searching Authority.

(iv) As a general rule, a "top-up" search will be conducted for all the claims forming the basis for the procedure under Chapter II PCT. Where the EPO in its function as IPEA considers that the international application does not comply with the requirement of unity of invention, the applicant will first be invited either to restrict the claims or to pay additional fees.

(v) Where the international application is amended and the basis for the amendments is not sufficiently explained or the amendments go beyond the disclosure of the international application as originally filed, the EPO will limit the "top-up" search to the scope of the claims forming the basis of the international preliminary examination report.

(vi) If relevant written documents are found during the "top-up" search that give rise to objections, in particular with regard to novelty and inventive step, the EPO in its function as IPEA will issue a second written opinion or conduct a telephone consultation.

(vii) Any relevant documents found during the "top-up" search will be listed in the international preliminary examination report, with the exception of documents that become irrelevant in view of amendments or arguments filed in reply to the written opinion.

(viii) In the event that only intermediate prior art documents (P) or potentially conflicting applications (E) are found during the "top-up" search and there are no other objections, a second written opinion will only be issued if the documents would give rise to objections under Article 54(3) European Patent Convention in the regional phase before the EPO. Otherwise, an International Preliminary Examination Report will be issued.

On 1 July 2014, a new Rule 66.1ter and an amended Rule 70.2(f) Patent Cooperation Treaty (PCT) entered into force. Due to these new provisions, the European Patent Office (EPO) in its function as an International Preliminary Examination Authority (IPEA) for Chapter II PCT procedures will conduct a "top-up" search to find prior art that was published or became available after the date on which the international search report was established.

In a notice from the European Patent Office, the following key aspects of this "top-up" search are highlighted:

(i) The EPO will conduct a "top-up" search at the start of the Chapter II PCT procedure, and no express request by the applicant is required in this respect.

(ii) The "top-up" search will mainly focus on finding intermediate prior art documents that have become public since the international search was performed which could become relevant under Article 54(3) European Patent Convention in the European phase. The search will also cover prior art that was cited in national proceedings for the same application if such documents became available to the EPO.

(iii) The "top-up" search will not extend beyond the subject-matter searched by the International Searching Authority.

(iv) As a general rule, a "top-up" search will be conducted for all the claims forming the basis for the procedure under Chapter II PCT. Where the EPO in its function as IPEA considers that the international application does not comply with the requirement of unity of invention, the applicant will first be invited either to restrict the claims or to pay additional fees.

(v) Where the international application is amended and the basis for the amendments is not sufficiently explained or the amendments go beyond the disclosure of the international application as originally filed, the EPO will limit the "top-up" search to the scope of the claims forming the basis of the international preliminary examination report.

(vi) If relevant written documents are found during the "top-up" search that give rise to objections, in particular with regard to novelty and inventive step, the EPO in its function as IPEA will issue a second written opinion or conduct a telephone consultation.

(vii) Any relevant documents found during the "top-up" search will be listed in the international preliminary examination report, with the exception of documents that become irrelevant in view of amendments or arguments filed in reply to the written opinion.

(viii) In the event that only intermediate prior art documents (P) or potentially conflicting applications (E) are found during the "top-up" search and there are no other objections, a second written opinion will only be issued if the documents would give rise to objections under Article 54(3) European Patent Convention in the regional phase before the EPO. Otherwise, an International Preliminary Examination Report will be issued.

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Revised Japanese Patent, Utility Model, Design and Trademark laws have been promulgated in May, 2014. Although the exact date has not yet been determined, it is expected that the new laws (except for provisions relating to new Design Law and provisions for regional collective trademarks) will be enforced from early 2015.

1. Revision of Patent Law

1.1 Remedy for non-observance of a time limit
In the Japanese practice, currently there is little possibility for the applicant to remedy the non-observance of a time limit. In order to reconcile this aspect internationally, the provisions which allow remedy for the non-observance are introduced. Under the new provisions, the application can be recovered when the applicant does not observe the time limit because of unavoidable reasons (such as disaster, etc.). For example, the non-observance of the time limit such as filing a divisional application/a converted application/a request for extension of the patent term and paying the grant fee (1st to 3rd annuities) can be remedied under the new law, provided all due care has been taken. The non-observance of the time limit such as requesting for priority and requesting for the substantial examination can also be remedied if there is a reasonable ground for the non-observance.

Said provisions are also applied mutatis mutandis to Utility Model Law, Design Law and Trademark Law.

1.2 Post-grant opposition
Japanese Patent law had a post-grant opposition system until 2003. However, in order to solve the dispute between two parties at an early date and to reduce the burden of the patent owner, the opposition system was abolished in 2004.

In the present revision of the Patent Law, it has been decided that the post-grant opposition system is re-introduced, so that the applicant can obtain more stable patent rights at an early stage. Under the new opposition system, anyone can oppose the granted patent within six months from the date of the publication of granted patent.

In connection to the introduction of the opposition system, the appellant of invalidation appeal has been restricted only to “interested party”, in order not to increase the undue burden for the patentee.

2. Revision of Design Law

Japan is now considering acceding the “Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs”. In order to complete the accession to the Geneva Act, related provisions are introduced into the Japanese Design Law.

3. Revision of Trademark Law

3.1 New types of marks to be protected
It is decided that colors and sounds are protected as trademarks, in view of the fact that some countries protect them under trademark law. Regarding colors, they can be protected in combination with letters, figures or three-dimensional shapes under the current trademark law. The new law stipulates that colors can be protected independently.

3.2 Expansion of the standing of applicant for regional collective trademarks
“Regional collective trademarks” are trademarks used by the members of certain associations and consist solely of the name of the region and the common name or the customarily used name of the goods or services. To encourage further the promotion of regional brands, the standing of applicants is expanded to “Chamber of Commerce”, “Commerce and Industry Association” and “Non-Profitable Organization” under the new law.

Revised Japanese Patent, Utility Model, Design and Trademark laws have been promulgated in May, 2014. Although the exact date has not yet been determined, it is expected that the new laws (except for provisions relating to new Design Law and provisions for regional collective trademarks) will be enforced from early 2015.

1. Revision of Patent Law

1.1 Remedy for non-observance of a time limit
In the Japanese practice, currently there is little possibility for the applicant to remedy the non-observance of a time limit. In order to reconcile this aspect internationally, the provisions which allow remedy for the non-observance are introduced. Under the new provisions, the application can be recovered when the applicant does not observe the time limit because of unavoidable reasons (such as disaster, etc.). For example, the non-observance of the time limit such as filing a divisional application/a converted application/a request for extension of the patent term and paying the grant fee (1st to 3rd annuities) can be remedied under the new law, provided all due care has been taken. The non-observance of the time limit such as requesting for priority and requesting for the substantial examination can also be remedied if there is a reasonable ground for the non-observance.

Said provisions are also applied mutatis mutandis to Utility Model Law, Design Law and Trademark Law.

1.2 Post-grant opposition
Japanese Patent law had a post-grant opposition system until 2003. However, in order to solve the dispute between two parties at an early date and to reduce the burden of the patent owner, the opposition system was abolished in 2004.

In the present revision of the Patent Law, it has been decided that the post-grant opposition system is re-introduced, so that the applicant can obtain more stable patent rights at an early stage. Under the new opposition system, anyone can oppose the granted patent within six months from the date of the publication of granted patent.

In connection to the introduction of the opposition system, the appellant of invalidation appeal has been restricted only to “interested party”, in order not to increase the undue burden for the patentee.

2. Revision of Design Law

Japan is now considering acceding the “Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs”. In order to complete the accession to the Geneva Act, related provisions are introduced into the Japanese Design Law.

3. Revision of Trademark Law

3.1 New types of marks to be protected
It is decided that colors and sounds are protected as trademarks, in view of the fact that some countries protect them under trademark law. Regarding colors, they can be protected in combination with letters, figures or three-dimensional shapes under the current trademark law. The new law stipulates that colors can be protected independently.

3.2 Expansion of the standing of applicant for regional collective trademarks
“Regional collective trademarks” are trademarks used by the members of certain associations and consist solely of the name of the region and the common name or the customarily used name of the goods or services. To encourage further the promotion of regional brands, the standing of applicants is expanded to “Chamber of Commerce”, “Commerce and Industry Association” and “Non-Profitable Organization” under the new law.

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Bosnia and Herzegovina

New official fees for IP matters entered into force on March 5, 2014. As expected, the new fees mostly increase the total cost for all new cases filed after March 5, 2104. The document communicating the new fees was published in the Official Gazette of Bosnia and Herzegovina (available only in local language) on February 25, 2014 under the title of “Odluka o izmjenama tarife administrativnih taksi”.

Montenegro

a) In February 2014, a memorandum of understanding was signed between Montenegro’s Intellectual Property Office and OHIM.

Excerpt from OHIM’s press release:
OHIM and the Intellectual Property Office of Montenegro (IPOM) have signed a Memorandum of Understanding, covering a range of cooperation activities, within the framework of the Office's International Cooperation Programme approved last February.

Under the agreement, Montenegro will work towards joining TMview, Designview and TMclass, as well as taking part in training activities organised by OHIM. A national expert from the IPOM will also join OHIM to share best practices and exchange experiences.

In particular, cooperation activities include expert meetings, sharing of trademark and design data and related statistics, and harmonized exchange of priority documents. OHIM will provide IT support and training in development and expansion of online databases of IP rights.

As a result of the Memorandum, IPOM has set up a searchable online database (available only in local language) of registered IP rights in Montenegro which is accessible via its official website.

The text of the memorandum can be found on the IPOM website.

b) IPOM has prepared a template for opposition submission. Even though use of the opposition template is not obligatory by law and bylaws, IPOM believes that use of template will improve efficiency as oppositions’ reasons will be more clearly visible.

The form is available only in local language at the following link.

Croatia and Slovenia

a) Croatian and Slovenian Intellectual Property Offices both published recent OHIM Common Communication in relation to the 'IP Translator' ruling.

In particular, following the ruling in Case C-307/10 “IP Translator”, OHIM together with National Offices continued to work on a project aiming to reach common ground in areas where IP Offices have different practices. For example, the Trademark Offices of the European Union Member States are working together to establish a common understanding of the requirements of clarity and precision in the designation of goods and services and to develop a common set of principles to be applied to their respective classification practices.

Furthermore, the Trademark Offices of the European Union Member States are working together to determine which of the general indications of the Nice Class Headings are acceptable for classification, pursuant to the above criteria of clarity and precision. This will result in a harmonized approach on the acceptance for classification of each of the general indications.

From a practical perspective as of January 01, 2014, for CTMs filed after “IP translator” before the Croatian and Slovenian IP Offices, the terms of the class headings are to be interpreted literally. Same goes for national trademarks filed after “IP translator”, containing the entire range of Nice class headings.

b) The Croatian and Slovenian Intellectual Property Offices both published the recent OHIM Common Communication regarding black white (B&W) trademark registrations.

The purpose of the joint communication is to establish a more transparent, predictable, legally certain and cohesive approach of the National IP Offices regarding the scope of protection which should be given to trademarks registered in B&W. Some National Offices applied the “B&W-covers-all” approach under which trademarks in B&W have protection for all colours and colour combinations, thus maximum protection, colour-wise. Other Offices applied the “what you see is what you get” approach which gives protection to the mark as it is registered, meaning that trademarks which are filed in B&W are only protected as such.

In particular, the joint communication consists of three parts where common practice will be implemented:

1) Priority (Is a trade mark in B&W and/or greyscale from which priority is claimed identical to the same mark in colour?)

  • Common Practice
    • A trademark in B&W from which priority is claimed is not identical to the same mark in colour unless the differences in colour are insignificant (An insignificant difference between two marks is a difference that a reasonably observant consumer will perceive only upon side by side examination of the mark)
    • A trademark in greyscale from which priority is claimed is not identical to the same mark in colour or in B&W unless the differences in the colours or in the contrast of shades are insignificant

2) Relative grounds - is an earlier trade mark in B&W and/or grayscale identical to the same mark in colour?

  • Common Practice
    • An earlier trademark in B&W is not identical to the same mark in colour unless the differences in colour are insignificant.
    • An earlier trademark in greyscale is not identical to the same mark in colour, or in B&W, unless the differences in the colours or in the contrast of shades are insignificant.

3) Genuine use - is the use of a colour version of a trade mark registered in B&W/greyscale (or vice versa) acceptable for the purpose of establishing genuine use?

  • Common Practice
    • A change only in colour does not alter the distinctive character of the trademark, as long as the following requirements are met:
      • the word/figurative elements coincide and are the main distinctive elements;
      • the contrast of shades is respected;
      • colour or combination of colours does not possess distinctive character in itself and
      • colour is not one of the main contributors to the overall distinctiveness of the mark

For establishing genuine use, the principles applicable to trademarks in B&W also apply to greyscale trademarks.

Both Offices set July 01, 2014 as the date of implementation of the common practice.

Bosnia and Herzegovina

New official fees for IP matters entered into force on March 5, 2014. As expected, the new fees mostly increase the total cost for all new cases filed after March 5, 2104. The document communicating the new fees was published in the Official Gazette of Bosnia and Herzegovina (available only in local language) on February 25, 2014 under the title of “Odluka o izmjenama tarife administrativnih taksi”.

Montenegro

a) In February 2014, a memorandum of understanding was signed between Montenegro’s Intellectual Property Office and OHIM.

Excerpt from OHIM’s press release:
OHIM and the Intellectual Property Office of Montenegro (IPOM) have signed a Memorandum of Understanding, covering a range of cooperation activities, within the framework of the Office's International Cooperation Programme approved last February.

Under the agreement, Montenegro will work towards joining TMview, Designview and TMclass, as well as taking part in training activities organised by OHIM. A national expert from the IPOM will also join OHIM to share best practices and exchange experiences.

In particular, cooperation activities include expert meetings, sharing of trademark and design data and related statistics, and harmonized exchange of priority documents. OHIM will provide IT support and training in development and expansion of online databases of IP rights.

As a result of the Memorandum, IPOM has set up a searchable online database (available only in local language) of registered IP rights in Montenegro which is accessible via its official website.

The text of the memorandum can be found on the IPOM website.

b) IPOM has prepared a template for opposition submission. Even though use of the opposition template is not obligatory by law and bylaws, IPOM believes that use of template will improve efficiency as oppositions’ reasons will be more clearly visible.

The form is available only in local language at the following link.

Croatia and Slovenia

a) Croatian and Slovenian Intellectual Property Offices both published recent OHIM Common Communication in relation to the 'IP Translator' ruling.

In particular, following the ruling in Case C-307/10 “IP Translator”, OHIM together with National Offices continued to work on a project aiming to reach common ground in areas where IP Offices have different practices. For example, the Trademark Offices of the European Union Member States are working together to establish a common understanding of the requirements of clarity and precision in the designation of goods and services and to develop a common set of principles to be applied to their respective classification practices.

Furthermore, the Trademark Offices of the European Union Member States are working together to determine which of the general indications of the Nice Class Headings are acceptable for classification, pursuant to the above criteria of clarity and precision. This will result in a harmonized approach on the acceptance for classification of each of the general indications.

From a practical perspective as of January 01, 2014, for CTMs filed after “IP translator” before the Croatian and Slovenian IP Offices, the terms of the class headings are to be interpreted literally. Same goes for national trademarks filed after “IP translator”, containing the entire range of Nice class headings.

b) The Croatian and Slovenian Intellectual Property Offices both published the recent OHIM Common Communication regarding black white (B&W) trademark registrations.

The purpose of the joint communication is to establish a more transparent, predictable, legally certain and cohesive approach of the National IP Offices regarding the scope of protection which should be given to trademarks registered in B&W. Some National Offices applied the “B&W-covers-all” approach under which trademarks in B&W have protection for all colours and colour combinations, thus maximum protection, colour-wise. Other Offices applied the “what you see is what you get” approach which gives protection to the mark as it is registered, meaning that trademarks which are filed in B&W are only protected as such.

In particular, the joint communication consists of three parts where common practice will be implemented:

1) Priority (Is a trade mark in B&W and/or greyscale from which priority is claimed identical to the same mark in colour?)

  • Common Practice
    • A trademark in B&W from which priority is claimed is not identical to the same mark in colour unless the differences in colour are insignificant (An insignificant difference between two marks is a difference that a reasonably observant consumer will perceive only upon side by side examination of the mark)
    • A trademark in greyscale from which priority is claimed is not identical to the same mark in colour or in B&W unless the differences in the colours or in the contrast of shades are insignificant

2) Relative grounds - is an earlier trade mark in B&W and/or grayscale identical to the same mark in colour?

  • Common Practice
    • An earlier trademark in B&W is not identical to the same mark in colour unless the differences in colour are insignificant.
    • An earlier trademark in greyscale is not identical to the same mark in colour, or in B&W, unless the differences in the colours or in the contrast of shades are insignificant.

3) Genuine use - is the use of a colour version of a trade mark registered in B&W/greyscale (or vice versa) acceptable for the purpose of establishing genuine use?

  • Common Practice
    • A change only in colour does not alter the distinctive character of the trademark, as long as the following requirements are met:
      • the word/figurative elements coincide and are the main distinctive elements;
      • the contrast of shades is respected;
      • colour or combination of colours does not possess distinctive character in itself and
      • colour is not one of the main contributors to the overall distinctiveness of the mark

For establishing genuine use, the principles applicable to trademarks in B&W also apply to greyscale trademarks.

Both Offices set July 01, 2014 as the date of implementation of the common practice.

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This is the case in which Apple requested the court to confirm that Apple’s products do not infringe Samsung’s Japanese patent No. 4642898.

Samsung declared its willingness to negotiate a license agreement on the basis of fair, reasonable and non-discriminatory terms (i.e. FRAND terms, which we’ve reported on previously). Apple uses Samsung’s patent technology for their products. Thus, Apple attempted to contract with Samsung for using the patent. However, Apple and Samsung could not reach an agreement. Ultimately, Apple filed a lawsuit before the Tokyo District Court.

In the first instance, Tokyo District Court ruled that although some acts of Apple infringe the patent, Samsung cannot exercise its patent right against Apple, since Samsung did not negotiate the license agreement under FRAND with Apple in good faith: Apple had requested Samsung to disclose some information relating to the royalty proposed by Samsung, so that Apple can judge if such a proposal is appropriate or not. However, Samsung did not disclose such information and just asserted that Apple should present their counter-proposal if Apple does not agree with Samsung’s proposal.

Samsung appealed against the decision to IPHC, and IPHC decided to review this case in Grand Panel (collegial body of five judges including four chief judges of each division of IPHC). This is the first Japanese IP case for which the court collected public comments on exercising patent rights under FRAND.

The Grand Panel judged as follows:

(1) Is the license agreement completed by just declaring FRAND? → No. FRAND is not an offer of the license agreement. Since Apple and Samsung have not come to the final agreement of the contract, there is no valid contract between Apple and Samsung.

(2) Can Samsung exercise its patent right against Apple? → Partially yes, for compensation of damage. Not, for injunction.

2.1   IPHC mentions that the compensation of damage within the range of “fair and reasonable condition” should be admitted, even under FRAND declaration. On the other hand, if the proprietor asserts the royalty which is beyond the range of “fair and reasonable condition”, such a part (the part beyond the “fair and reasonable condition”) cannot be compensated.

2.2   Regarding injunction, IPHC concluded that the proprietor who declares FRAND cannot request an injunction against the third party, as long as the party has an intention to make license agreement with the proprietor (since Apple tried to make a contract with Samsung, IPHC judged that Apple had an intention to make a contract. Thus, IPHC did not admit Samsung’s right for injunction against Apple’s products). The decision states, on the other hand, if the third party has no intention to make a license agreement with the proprietor, the injunction can be permitted.

This is the case in which Apple requested the court to confirm that Apple’s products do not infringe Samsung’s Japanese patent No. 4642898.

Samsung declared its willingness to negotiate a license agreement on the basis of fair, reasonable and non-discriminatory terms (i.e. FRAND terms, which we’ve reported on previously). Apple uses Samsung’s patent technology for their products. Thus, Apple attempted to contract with Samsung for using the patent. However, Apple and Samsung could not reach an agreement. Ultimately, Apple filed a lawsuit before the Tokyo District Court.

In the first instance, Tokyo District Court ruled that although some acts of Apple infringe the patent, Samsung cannot exercise its patent right against Apple, since Samsung did not negotiate the license agreement under FRAND with Apple in good faith: Apple had requested Samsung to disclose some information relating to the royalty proposed by Samsung, so that Apple can judge if such a proposal is appropriate or not. However, Samsung did not disclose such information and just asserted that Apple should present their counter-proposal if Apple does not agree with Samsung’s proposal.

Samsung appealed against the decision to IPHC, and IPHC decided to review this case in Grand Panel (collegial body of five judges including four chief judges of each division of IPHC). This is the first Japanese IP case for which the court collected public comments on exercising patent rights under FRAND.

The Grand Panel judged as follows:

(1) Is the license agreement completed by just declaring FRAND? → No. FRAND is not an offer of the license agreement. Since Apple and Samsung have not come to the final agreement of the contract, there is no valid contract between Apple and Samsung.

(2) Can Samsung exercise its patent right against Apple? → Partially yes, for compensation of damage. Not, for injunction.

2.1   IPHC mentions that the compensation of damage within the range of “fair and reasonable condition” should be admitted, even under FRAND declaration. On the other hand, if the proprietor asserts the royalty which is beyond the range of “fair and reasonable condition”, such a part (the part beyond the “fair and reasonable condition”) cannot be compensated.

2.2   Regarding injunction, IPHC concluded that the proprietor who declares FRAND cannot request an injunction against the third party, as long as the party has an intention to make license agreement with the proprietor (since Apple tried to make a contract with Samsung, IPHC judged that Apple had an intention to make a contract. Thus, IPHC did not admit Samsung’s right for injunction against Apple’s products). The decision states, on the other hand, if the third party has no intention to make a license agreement with the proprietor, the injunction can be permitted.

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Far from being just a mysterious realm of long gone times – as it is so beautifully depicted in the known folk stories of the 1001 Nights, nowadays the Arabic world is often but one-sidedly associated with the more extreme sides of life, be it through the gargantuan economic wealth accumulated by some oil states, or the difficult aftermath of the Arab Spring.

A less biased scrutiny shows yet another interesting facet to the observer: that of a slowly but steadily growing economy, intent on leaving oil-dependency behind. Especially since the turn of the millennium, more and more public and private resources and efforts have in fact been put into R&D (in other words, patents) and a variety of small and medium sized business startups (ie, trademarks), both for manufacture (for example for construction) and services (such as telecommunications). This tendency is aligned with an increase in buying power and growing brand awareness among local consumers, who look for famous foreign assets in their own home market.

Arabic is officially spoken in 27 countries, either as the only language (16 countries), the second official language (eight countries) or even a third official language (three countries). The 27 countries are: Algeria, Bahrain, Chad, Comoros, Djibouti, Egypt, Eritrea, Iraq, Israel, Jordan, Kuwait, Lebanon, Libya, Mauritania, Morocco, Oman, Palestine, Qatar, Sahrawi, Saudi Arabia, Somalia, Somaliland, Sudan, Syria, Tunisia, United Arab Emirates, and Yemen. These 27 countries have a population of around 450 million inhabitants, about 50% of whom are under 25 years of age.

Challenges for trademark owners
Foreign brand owners have long struggled to protect their IP rights properly in one of today’s most challenging economic environments – by and large united by religion and language, but at the same time heterogenic through its different cultural and historical local peculiarities. As in other “multi-font” territories (such as China, India, Japan, and Russia), trademark owners often face the necessity to file verbal trademarks twice: in Latin and Arabic characters. This poses the question of whether to follow a literal translation or phonetic transposition of the mark into the new language.

To read the full article, please view the PDF attached (as published in the The Trademark Lawyer magazine).

You can also find the Arabic version of the article here.

Far from being just a mysterious realm of long gone times – as it is so beautifully depicted in the known folk stories of the 1001 Nights, nowadays the Arabic world is often but one-sidedly associated with the more extreme sides of life, be it through the gargantuan economic wealth accumulated by some oil states, or the difficult aftermath of the Arab Spring.

A less biased scrutiny shows yet another interesting facet to the observer: that of a slowly but steadily growing economy, intent on leaving oil-dependency behind. Especially since the turn of the millennium, more and more public and private resources and efforts have in fact been put into R&D (in other words, patents) and a variety of small and medium sized business startups (ie, trademarks), both for manufacture (for example for construction) and services (such as telecommunications). This tendency is aligned with an increase in buying power and growing brand awareness among local consumers, who look for famous foreign assets in their own home market.

Arabic is officially spoken in 27 countries, either as the only language (16 countries), the second official language (eight countries) or even a third official language (three countries). The 27 countries are: Algeria, Bahrain, Chad, Comoros, Djibouti, Egypt, Eritrea, Iraq, Israel, Jordan, Kuwait, Lebanon, Libya, Mauritania, Morocco, Oman, Palestine, Qatar, Sahrawi, Saudi Arabia, Somalia, Somaliland, Sudan, Syria, Tunisia, United Arab Emirates, and Yemen. These 27 countries have a population of around 450 million inhabitants, about 50% of whom are under 25 years of age.

Challenges for trademark owners
Foreign brand owners have long struggled to protect their IP rights properly in one of today’s most challenging economic environments – by and large united by religion and language, but at the same time heterogenic through its different cultural and historical local peculiarities. As in other “multi-font” territories (such as China, India, Japan, and Russia), trademark owners often face the necessity to file verbal trademarks twice: in Latin and Arabic characters. This poses the question of whether to follow a literal translation or phonetic transposition of the mark into the new language.

To read the full article, please view the PDF attached (as published in the The Trademark Lawyer magazine).

You can also find the Arabic version of the article here.

Read more

By implementing a Patent Prosecution Highway (PPH) program, patent offices aim to avoid duplication of effort – which is good. Basically, if a patent application has been positively examined by the patent office of country A, this result can be brought to the attention of the patent office of country B, if the latter has promised to take such a result into account in the framework of a PPH program based on a contract between patent office A and B.

For the patent applicant this sounds like a good idea. The positive examination result of patent office A will be used by patent office B, thus the duration of patent granting, as well as the costs, are reduced. That is the theory anyway.

However, patent office B does not have to follow the positive examination result of patent office A. It can follow it, but may also come to a different conclusion. Or come to the same conclusion, but only after a few material office actions. So, is there a positive practical effect of such programs or not? Let’s try to find out.

Existing PPH programs

It all started in 2006 with the first PPH agreement between the Japanese Patent Office and the US Patent Office. Since then, a large number of PPH programs have been signed between different patent offices. The PPH portal site of the Japan Patent Office provides a good overview. There are currently six different types of PPH programs and related agreements:

  • Classic PPH,
  • PPH Mottainai,
  • PPH 2.0,
  • PCT (Patent Cooperation Treaty)-PPH,
  • Global PPH (a recent addition), and
  • IP5 PPH.

To read the full article, please view the PDF attached (as published in The Patent Lawyer magazine).

By implementing a Patent Prosecution Highway (PPH) program, patent offices aim to avoid duplication of effort – which is good. Basically, if a patent application has been positively examined by the patent office of country A, this result can be brought to the attention of the patent office of country B, if the latter has promised to take such a result into account in the framework of a PPH program based on a contract between patent office A and B.

For the patent applicant this sounds like a good idea. The positive examination result of patent office A will be used by patent office B, thus the duration of patent granting, as well as the costs, are reduced. That is the theory anyway.

However, patent office B does not have to follow the positive examination result of patent office A. It can follow it, but may also come to a different conclusion. Or come to the same conclusion, but only after a few material office actions. So, is there a positive practical effect of such programs or not? Let’s try to find out.

Existing PPH programs

It all started in 2006 with the first PPH agreement between the Japanese Patent Office and the US Patent Office. Since then, a large number of PPH programs have been signed between different patent offices. The PPH portal site of the Japan Patent Office provides a good overview. There are currently six different types of PPH programs and related agreements:

  • Classic PPH,
  • PPH Mottainai,
  • PPH 2.0,
  • PCT (Patent Cooperation Treaty)-PPH,
  • Global PPH (a recent addition), and
  • IP5 PPH.

To read the full article, please view the PDF attached (as published in The Patent Lawyer magazine).

Read more

Conceptually, bad faith is universally understood as ‘dishonest intention’. In trademark law, this concept is becoming more and more important, especially in a global environment where competition is very high.

So-called bad faith trademark registrations are prior trademark registrations filed by companies that correspond to a trademark of a foreign company (not yet registered in the concerned country). Most of the time, these registrations are done with the express intention of selling it back to the foreign company at an inflated price. This is also called ‘trademark squatting’.

The issue of bad faith filings in China has be-come increasingly significant. The protection offered to well-known companies has tradition-ally been insufficient. However, it is now com-monly recognised that improvements have been made.

The concept of ‘bad faith’ is not defined in Chi-nese laws and regulations. According to a se-nior official of the Chinese Trademark Review and Adjudication Board (TRAB): “Bad faith is a mental state of a person in that he knew or should have known that the trademark in ques-tion originated from a third party.”

In 2010, the US Patent and Trademark Office (USPTO) joined the Japan Patent Office, the Office for Harmonization in the Internal Market (OHIM) and China’s State Intellectual Property Office (SIPO) to launch a series of technical seminars in Beijing on that issue, intended to identify useful features of national trademark systems that can be implemented as best prac-tices in other countries.

The Beijing Number 1 Intermediate People’s Court published the results of its study on bad faith filing in December 2012. The study counselled courts to deter squatting activities when they interpret and apply the law, as well as to admit evidence with the goal of prohibiting this activity.

Read the full article in the IPProTheInternet magazine - issue 38 - PDF article attached. To view the full online magazine, click here.

Conceptually, bad faith is universally understood as ‘dishonest intention’. In trademark law, this concept is becoming more and more important, especially in a global environment where competition is very high.

So-called bad faith trademark registrations are prior trademark registrations filed by companies that correspond to a trademark of a foreign company (not yet registered in the concerned country). Most of the time, these registrations are done with the express intention of selling it back to the foreign company at an inflated price. This is also called ‘trademark squatting’.

The issue of bad faith filings in China has be-come increasingly significant. The protection offered to well-known companies has tradition-ally been insufficient. However, it is now com-monly recognised that improvements have been made.

The concept of ‘bad faith’ is not defined in Chi-nese laws and regulations. According to a se-nior official of the Chinese Trademark Review and Adjudication Board (TRAB): “Bad faith is a mental state of a person in that he knew or should have known that the trademark in ques-tion originated from a third party.”

In 2010, the US Patent and Trademark Office (USPTO) joined the Japan Patent Office, the Office for Harmonization in the Internal Market (OHIM) and China’s State Intellectual Property Office (SIPO) to launch a series of technical seminars in Beijing on that issue, intended to identify useful features of national trademark systems that can be implemented as best prac-tices in other countries.

The Beijing Number 1 Intermediate People’s Court published the results of its study on bad faith filing in December 2012. The study counselled courts to deter squatting activities when they interpret and apply the law, as well as to admit evidence with the goal of prohibiting this activity.

Read the full article in the IPProTheInternet magazine - issue 38 - PDF article attached. To view the full online magazine, click here.

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As in the game "Battleship", brand owners cannot see their counterfeiting opponents online. They must blindly target, ‘shoot’, and then see if they hit their mark. Unlike the game, in which each ship has a fixed location, online counterfeiters can quickly switch operations to a new website or different account once they have been identified. This switch can happen in days or even hours.

With the fast-paced growth of e-commerce, the availability of counterfeit goods continues to grow to ever higher levels. The International Chamber of Commerce estimates that, by 2015, $1.7 trillion of counterfeit goods will have infiltrated international markets. The International AntiCounterfeiting Coalition (IACC) reports that in the fiscal year 2012, the US Department of Homeland Security seized counterfeit goods valued at more than $1.25 billion in the US alone; this includes products from electronics and luxury goods to baby food, pharmaceuticals and car parts.

The anonymity and fluidity of the internet enable counterfeiters to trick consumers into thinking that they are buying legitimate goods when, in fact, they are fakes. Many consumers are duped by pictures of legitimate products, but what they really order and receive from these online marketplaces are inferior, counterfeit items. Enforcement on these actions is often patchy and, because of the fluidity with which accounts are moved, ineffective. For brand owners, it is as though the Battleship board is tilted in the counterfeiters’ favour.

Read the full article on the World IP Review magazine website - World IP Review Annual 2014.

As in the game "Battleship", brand owners cannot see their counterfeiting opponents online. They must blindly target, ‘shoot’, and then see if they hit their mark. Unlike the game, in which each ship has a fixed location, online counterfeiters can quickly switch operations to a new website or different account once they have been identified. This switch can happen in days or even hours.

With the fast-paced growth of e-commerce, the availability of counterfeit goods continues to grow to ever higher levels. The International Chamber of Commerce estimates that, by 2015, $1.7 trillion of counterfeit goods will have infiltrated international markets. The International AntiCounterfeiting Coalition (IACC) reports that in the fiscal year 2012, the US Department of Homeland Security seized counterfeit goods valued at more than $1.25 billion in the US alone; this includes products from electronics and luxury goods to baby food, pharmaceuticals and car parts.

The anonymity and fluidity of the internet enable counterfeiters to trick consumers into thinking that they are buying legitimate goods when, in fact, they are fakes. Many consumers are duped by pictures of legitimate products, but what they really order and receive from these online marketplaces are inferior, counterfeit items. Enforcement on these actions is often patchy and, because of the fluidity with which accounts are moved, ineffective. For brand owners, it is as though the Battleship board is tilted in the counterfeiters’ favour.

Read the full article on the World IP Review magazine website - World IP Review Annual 2014.

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In today’s highly competitive environment, companies in the automotive industry are seeking to secure their innovations and are capitalizing on the value of their patents and designs to the maximum. Consequently, automotive manufacturers and suppliers are among the most prolific patent and design filers in Germany.

Last week’s Autorecht conference organized by the University of Augsburg, Faculty of Law focused on the legal aspects currently facing the automotive parts industry, such as unfair competition, antitrust law as well as trademark law.

A topic that stirs controversy in Germany and Europe - which was also brought into discussion during the conference - is related to the limits of IP protection for auto part designs. The implications of the new German Design Law that came into force at the beginning of this year were also discussed.

Dr. Nowak’s speech emphasized the increased importance for companies to assess the value of intellectual property assets, allowing them to carefully plan financial and strategic decisions and avoid investment risks. While in the past IP valuations were rarely performed only for specific purposes such as accounting, in the past few years in connection with the globalized international context where companies need to constantly invest in R&D to create innovation, such assessments are becoming more and more common.

The lecture also touched on the triggers for increased IP valuation demand and the various situations when IP valuations are a necessity, such as M&A, licensing-in/out, IP transactions, (re)financing and accounting.

In today’s highly competitive environment, companies in the automotive industry are seeking to secure their innovations and are capitalizing on the value of their patents and designs to the maximum. Consequently, automotive manufacturers and suppliers are among the most prolific patent and design filers in Germany.

Last week’s Autorecht conference organized by the University of Augsburg, Faculty of Law focused on the legal aspects currently facing the automotive parts industry, such as unfair competition, antitrust law as well as trademark law.

A topic that stirs controversy in Germany and Europe - which was also brought into discussion during the conference - is related to the limits of IP protection for auto part designs. The implications of the new German Design Law that came into force at the beginning of this year were also discussed.

Dr. Nowak’s speech emphasized the increased importance for companies to assess the value of intellectual property assets, allowing them to carefully plan financial and strategic decisions and avoid investment risks. While in the past IP valuations were rarely performed only for specific purposes such as accounting, in the past few years in connection with the globalized international context where companies need to constantly invest in R&D to create innovation, such assessments are becoming more and more common.

The lecture also touched on the triggers for increased IP valuation demand and the various situations when IP valuations are a necessity, such as M&A, licensing-in/out, IP transactions, (re)financing and accounting.

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Dennemeyer & Associates attorneys Dr. Malte Köllner and Mr. Tomislav Hadzija have been recognized by the Chambers Europe 2014 as top attorneys, representative for Germany, respectively Croatia. One of the most prominent legal ranking publications, Chambers Europe identifies and ranks the most outstanding law firms and lawyers in over 180 jurisdictions across the world.

The Chambers Europe rankings are generated based on several factors, considerations and in-depth research conducted by a large team of more than 140 researchers, who investigate lawyers and law firms to assess their legal knowledge and experience, their ability, effectiveness, and client-service approach. Client feedback plays a crucial role in a firm's ranking and gives insight on what makes the firm/lawyer stand out in the market.

Dr. Malte Köllner - Head of Foreign Filing at Dennemeyer & Associates in Frankfurt - is qualified as a German Patent Attorney and a European Patent, Trademark and Design Attorney, and holds a Ph.D. in Physical Chemistry and a diploma in Physics from the University of Heidelberg. His areas of expertise include physics, physical chemistry, optics, lasers, biotechnology, medical devices and software. With a vast experience in the field of intellectual property, Dr. Köllner furthermore acts as the editor-in-chief of the well-known German journal for patent law “Mitteilungen der Deutschen Patentanwälte” and is lecturer at various conferences and universities. His notable achievements in the IP area, among which outstanding contributions to patent valuation and prosecution, have earned him a listing as one of the World’s Leading Lawyers and IP Strategists for several years in a row.

Mr. Tomislav Hadzija, who practices at the recently established Dennemeyer & Associates office in Croatia, is qualified as an Attorney at Law (HR), Patent and Trademark Attorney (HR), and a European Patent, Trademark and Design Attorney. His areas of expertise cover patent prosecution, patent search, trademark and design law, copyrights, anti-counterfeiting, IP contracts and corporate law. Ranked as an IP lawyer by the Chambers Europe, Mr. Hadzija was recognized for his “broad experience across various IP matters, with his trade mark and patent know-how singled out for particular praise”.

Dennemeyer & Associates attorneys Dr. Malte Köllner and Mr. Tomislav Hadzija have been recognized by the Chambers Europe 2014 as top attorneys, representative for Germany, respectively Croatia. One of the most prominent legal ranking publications, Chambers Europe identifies and ranks the most outstanding law firms and lawyers in over 180 jurisdictions across the world.

The Chambers Europe rankings are generated based on several factors, considerations and in-depth research conducted by a large team of more than 140 researchers, who investigate lawyers and law firms to assess their legal knowledge and experience, their ability, effectiveness, and client-service approach. Client feedback plays a crucial role in a firm's ranking and gives insight on what makes the firm/lawyer stand out in the market.

Dr. Malte Köllner - Head of Foreign Filing at Dennemeyer & Associates in Frankfurt - is qualified as a German Patent Attorney and a European Patent, Trademark and Design Attorney, and holds a Ph.D. in Physical Chemistry and a diploma in Physics from the University of Heidelberg. His areas of expertise include physics, physical chemistry, optics, lasers, biotechnology, medical devices and software. With a vast experience in the field of intellectual property, Dr. Köllner furthermore acts as the editor-in-chief of the well-known German journal for patent law “Mitteilungen der Deutschen Patentanwälte” and is lecturer at various conferences and universities. His notable achievements in the IP area, among which outstanding contributions to patent valuation and prosecution, have earned him a listing as one of the World’s Leading Lawyers and IP Strategists for several years in a row.

Mr. Tomislav Hadzija, who practices at the recently established Dennemeyer & Associates office in Croatia, is qualified as an Attorney at Law (HR), Patent and Trademark Attorney (HR), and a European Patent, Trademark and Design Attorney. His areas of expertise cover patent prosecution, patent search, trademark and design law, copyrights, anti-counterfeiting, IP contracts and corporate law. Ranked as an IP lawyer by the Chambers Europe, Mr. Hadzija was recognized for his “broad experience across various IP matters, with his trade mark and patent know-how singled out for particular praise”.

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In the interlocutory decision R 19/12 dated 25 April 2014, the Enlarged Board of the European Patent Office (EPO) came to the conclusion that its chairman is suspected of partiality and has therefore been replaced. It can be expected that this decision will give rise to some turmoil within the EPO.

While the decision at first sight seems to be directed against the chairman, it actually is not. Instead, the decision is basically a criticism of the organizational structure in which the Enlarged Board of Appeal of the EPO is embedded. This Enlarged Board is presided by a chairman who almost always – although not prescribed by the European Patent Convention – also serves as a Vice-President of the EPO. According to Article 10 of the European Patent Convention, Vice-Presidents of the EPO shall assist the President. Currently, this assistance includes a participation of the Vice-Presidents in the so-called Management Committee of the President. Based on this linkage to the management of the Office, the referring party in this case objected to the chairman of the Enlarged Board arguing that the necessary independence of the judge-like position of the chairman was jeopardized.

The deciding Enlarged Board sat in a composition of three members without the objected chairman and gave a detailed analysis of partiality objections under the European Patent Convention, under national laws of Member States, and also under the European Convention on Human Rights. It then developed the following criterion for assessing a partiality objection:

“It is decisive whether a rational, objective and informed observer taking into account the circumstances of the case would conclude that the [objecting] party could for good reasons doubt the impartiality of the objected member [of the Board].”

In view of the objected chairman’s management duties which are discussed in detail in the decision, the Board believed that the mentioned observer would have concluded that the objecting party could for good reasons doubt the impartiality of the chairman. Accordingly, the chairman was replaced. Thus demonstrating that an objection as in this case can probably be raised in any review procedure under the European Patent Convention. Unfortunately, an untenable situation is likely to result. The decision in this case begs for a re-organization of the management and in particular of the participation of members of the Enlarged Board of Appeal in the management. Moreover, the Enlarged Board of Appeal obviously used this case to stress that the independence of the Boards of Appeal within the EPO is presently not sufficiently reflected and should enjoy further enhancement.

In the interlocutory decision R 19/12 dated 25 April 2014, the Enlarged Board of the European Patent Office (EPO) came to the conclusion that its chairman is suspected of partiality and has therefore been replaced. It can be expected that this decision will give rise to some turmoil within the EPO.

While the decision at first sight seems to be directed against the chairman, it actually is not. Instead, the decision is basically a criticism of the organizational structure in which the Enlarged Board of Appeal of the EPO is embedded. This Enlarged Board is presided by a chairman who almost always – although not prescribed by the European Patent Convention – also serves as a Vice-President of the EPO. According to Article 10 of the European Patent Convention, Vice-Presidents of the EPO shall assist the President. Currently, this assistance includes a participation of the Vice-Presidents in the so-called Management Committee of the President. Based on this linkage to the management of the Office, the referring party in this case objected to the chairman of the Enlarged Board arguing that the necessary independence of the judge-like position of the chairman was jeopardized.

The deciding Enlarged Board sat in a composition of three members without the objected chairman and gave a detailed analysis of partiality objections under the European Patent Convention, under national laws of Member States, and also under the European Convention on Human Rights. It then developed the following criterion for assessing a partiality objection:

“It is decisive whether a rational, objective and informed observer taking into account the circumstances of the case would conclude that the [objecting] party could for good reasons doubt the impartiality of the objected member [of the Board].”

In view of the objected chairman’s management duties which are discussed in detail in the decision, the Board believed that the mentioned observer would have concluded that the objecting party could for good reasons doubt the impartiality of the chairman. Accordingly, the chairman was replaced. Thus demonstrating that an objection as in this case can probably be raised in any review procedure under the European Patent Convention. Unfortunately, an untenable situation is likely to result. The decision in this case begs for a re-organization of the management and in particular of the participation of members of the Enlarged Board of Appeal in the management. Moreover, the Enlarged Board of Appeal obviously used this case to stress that the independence of the Boards of Appeal within the EPO is presently not sufficiently reflected and should enjoy further enhancement.

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As the weather starts to thaw in the northern Unites States, intellectual property matters are heating up across the country.

United States Patent and Trademark Office

New Office of International Patent Cooperation
The USPTO has announced the creation of a new Office of International Patent Cooperation (OIPC). The OIPC was created to focus resources on international patent cooperation efforts. The new office will “provide optimized business process solutions to the international patent examination system for examiners and external stakeholders”.

The Deputy Director of the USPTO Michelle Lee stated, “It will allow us to increase certainty of IP rights while reducing costs for our stakeholders and moving towards a harmonized patent system.” To read the full press release, click here.

Reviewing Rules for Post Grant Patent Proceedings
As promised, the USPTO is in process of reviewing the new post grant patent challenges of the America Invents Act. The Patent Trial & Appeal Board’s (PTAB) is hosting roundtable discussions throughout the country through the beginning of May to help inform the debate around potential rule revisions. Then, this summer, the USPTO will have a Federal Register Notice to collect more comments. For schedule and agenda for the PTAB discussions, click here.

Social Media and Intellectual Property Rights

As social media becomes increasingly integrated into all aspects of our day-to-day lives, both business and personal, the conflict between social media pages and brands become a growing reality. When a brand finds someone, usually a fan, infringing on their IP, it’s important for the brand to weigh the type of response versus the potential media effect. All responses from the brand, especially in the social media realm, are likely to be broadcast to a wider audience then the initial communication. Positive interactions with fans can reverberate quickly and gain momentum for a brand, providing a virtual goldmine, but this same momentum applies to negative interactions as well. Two recent articles help highlight this situation.

  • Manchester United recently took a heavy handed approach with a fan’s Twitter account that had only 100 followers; 100 followers is a very small footprint on Twitter. While Manchester United is correct in asserting their IP rights, the manner has drawn negative publicity and the instance is now an article on World IP Review magazine. It’s likely we would never have heard this story if Manchester United had taken a simpler approach and spoke with the Twitter handle owner, a dedicated fan, first.
  • Ferrari is also embroiled in a legal battle stemming from a fan page created by a teenager that grew to be one of the most popular car pages on Facebook. As noted in the article, the approach Ferrari took is in stark contrast to the situation found itself in when a fan page, created by two individuals not employed by Coke, amassed over a million fans. Rather than destroy the fan page or create negative media attention, Coke hired the individuals on as page administrators and worked together to build it into one of the most popular Facebook pages today. Coke is now used as an example of a brand that faced an IP infringement situation and handled it to the benefit of the brand; capitalizing on the strength of outside innovators and fans.

Trade Secrets

There has been an increase in media attention to Trade Secrets and its importance to the intellectual property management mix. Trade secrets are important to larger companies, but they are also just as critical for SMEs. Two articles with an interesting point of view on trade secrets:

  • In the last week of February, the Centre for Responsible Enterprise and Trade (CREATe) and PricewaterhouseCoopers (PwC) released a study titled ‘Economic Impact of Trade Secret Theft: A framework for companies to safeguard trade secrets and mitigate potential threats’. The IAM blog highlights key findings, the accuracy and the implications of the study.
  • A solid overview of trade secrets – what are they and satisfaction of the secrecy requirement – is provided by this IP Watchdog article. As the article points out, the key is whether “reasonable efforts to preserve secrecy” was employed. Though, what is “reasonable” will vary depending on the company resources and/or value of the secret itself.

As the weather starts to thaw in the northern Unites States, intellectual property matters are heating up across the country.

United States Patent and Trademark Office

New Office of International Patent Cooperation
The USPTO has announced the creation of a new Office of International Patent Cooperation (OIPC). The OIPC was created to focus resources on international patent cooperation efforts. The new office will “provide optimized business process solutions to the international patent examination system for examiners and external stakeholders”.

The Deputy Director of the USPTO Michelle Lee stated, “It will allow us to increase certainty of IP rights while reducing costs for our stakeholders and moving towards a harmonized patent system.” To read the full press release, click here.

Reviewing Rules for Post Grant Patent Proceedings
As promised, the USPTO is in process of reviewing the new post grant patent challenges of the America Invents Act. The Patent Trial & Appeal Board’s (PTAB) is hosting roundtable discussions throughout the country through the beginning of May to help inform the debate around potential rule revisions. Then, this summer, the USPTO will have a Federal Register Notice to collect more comments. For schedule and agenda for the PTAB discussions, click here.

Social Media and Intellectual Property Rights

As social media becomes increasingly integrated into all aspects of our day-to-day lives, both business and personal, the conflict between social media pages and brands become a growing reality. When a brand finds someone, usually a fan, infringing on their IP, it’s important for the brand to weigh the type of response versus the potential media effect. All responses from the brand, especially in the social media realm, are likely to be broadcast to a wider audience then the initial communication. Positive interactions with fans can reverberate quickly and gain momentum for a brand, providing a virtual goldmine, but this same momentum applies to negative interactions as well. Two recent articles help highlight this situation.

  • Manchester United recently took a heavy handed approach with a fan’s Twitter account that had only 100 followers; 100 followers is a very small footprint on Twitter. While Manchester United is correct in asserting their IP rights, the manner has drawn negative publicity and the instance is now an article on World IP Review magazine. It’s likely we would never have heard this story if Manchester United had taken a simpler approach and spoke with the Twitter handle owner, a dedicated fan, first.
  • Ferrari is also embroiled in a legal battle stemming from a fan page created by a teenager that grew to be one of the most popular car pages on Facebook. As noted in the article, the approach Ferrari took is in stark contrast to the situation found itself in when a fan page, created by two individuals not employed by Coke, amassed over a million fans. Rather than destroy the fan page or create negative media attention, Coke hired the individuals on as page administrators and worked together to build it into one of the most popular Facebook pages today. Coke is now used as an example of a brand that faced an IP infringement situation and handled it to the benefit of the brand; capitalizing on the strength of outside innovators and fans.

Trade Secrets

There has been an increase in media attention to Trade Secrets and its importance to the intellectual property management mix. Trade secrets are important to larger companies, but they are also just as critical for SMEs. Two articles with an interesting point of view on trade secrets:

  • In the last week of February, the Centre for Responsible Enterprise and Trade (CREATe) and PricewaterhouseCoopers (PwC) released a study titled ‘Economic Impact of Trade Secret Theft: A framework for companies to safeguard trade secrets and mitigate potential threats’. The IAM blog highlights key findings, the accuracy and the implications of the study.
  • A solid overview of trade secrets – what are they and satisfaction of the secrecy requirement – is provided by this IP Watchdog article. As the article points out, the key is whether “reasonable efforts to preserve secrecy” was employed. Though, what is “reasonable” will vary depending on the company resources and/or value of the secret itself.
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Dennemeyer & Associates is pleased to announce that Roxana Sullivan has recently joined our United States team of experienced attorneys working in our Chicago office. She will support clients with her in-depth knowledge of intellectual property and business issues with particular emphasis on trademark and copyright prosecution, clearance searches, opposition and cancellation proceedings before the Trademark Trial and Appeal Board,  licensing, and various business-related agreements.

Roxana obtained her J.D. from the University of South Carolina School of Law and a Bachelor of Arts degree from Wofford College. She has acquired extensive expertise in the area of trademark and copyright law and advising clients on effective methods of protecting and leveraging their intellectual property assets. Roxana represents clients with products and services covering a broad range of industries that include software, consumer goods, electronics, architectural designs, and non-profits. She has also worked extensively with companies to help protect their brands and domains online through UDRP proceedings and other measures of protection.

Active in the intellectual property field since 2007, Roxana clerked for a small general practice firm where she focused her attention on trademark and copyright matters. Later, she joined an IP boutique in Dallas, Texas, where Roxana honed her skills as an IP attorney. She handled both transactional and litigation matters for clients and represented clients in matters dealing with trademark and copyright infringement, unfair competition, and cybersquatting claims.

“I am excited to join Dennemeyer & Associates’ global team of patent and trademark attorneys.  I look forward to the opportunity to represent clients’ trademark and copyright interests across a broad range of industries. Our clients, who range from Fortune 500 companies to startups, can all benefit from the intellectual property counseling and strategic protection of their IP portfolios that we [Dennemeyer] provide.”

Roxana is based in our Chicago office in the United States. For any inquiries, please contact Roxana at rsullivan@dennemeyer-law.com or +1 312 380-6497.

Dennemeyer & Associates is pleased to announce that Roxana Sullivan has recently joined our United States team of experienced attorneys working in our Chicago office. She will support clients with her in-depth knowledge of intellectual property and business issues with particular emphasis on trademark and copyright prosecution, clearance searches, opposition and cancellation proceedings before the Trademark Trial and Appeal Board,  licensing, and various business-related agreements.

Roxana obtained her J.D. from the University of South Carolina School of Law and a Bachelor of Arts degree from Wofford College. She has acquired extensive expertise in the area of trademark and copyright law and advising clients on effective methods of protecting and leveraging their intellectual property assets. Roxana represents clients with products and services covering a broad range of industries that include software, consumer goods, electronics, architectural designs, and non-profits. She has also worked extensively with companies to help protect their brands and domains online through UDRP proceedings and other measures of protection.

Active in the intellectual property field since 2007, Roxana clerked for a small general practice firm where she focused her attention on trademark and copyright matters. Later, she joined an IP boutique in Dallas, Texas, where Roxana honed her skills as an IP attorney. She handled both transactional and litigation matters for clients and represented clients in matters dealing with trademark and copyright infringement, unfair competition, and cybersquatting claims.

“I am excited to join Dennemeyer & Associates’ global team of patent and trademark attorneys.  I look forward to the opportunity to represent clients’ trademark and copyright interests across a broad range of industries. Our clients, who range from Fortune 500 companies to startups, can all benefit from the intellectual property counseling and strategic protection of their IP portfolios that we [Dennemeyer] provide.”

Roxana is based in our Chicago office in the United States. For any inquiries, please contact Roxana at rsullivan@dennemeyer-law.com or +1 312 380-6497.

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Upon request by a party, proceedings before the European Patent Office (EPO) may be accelerated. Possible scenarios for accelerating proceedings before a Board of Appeal are given in the Notice from the EPO’s Vice-President Directorate-General 3 dated 17 March 2008 (recently published in OJ EPO 1/2014, 63). According to this Notice, acceleration is always a matter for the exercise of the Board’s discretion.

The procedure underlying interlocutory decision T 895/13 of 28 March 2014 concerned an opposition in which in the first instance before the Opposition Division, the patent was entirely revoked. The patent proprietor appealed the revocation, and at the appeal stage the opponent requested an accelerated appeal procedure. Two major arguments were advanced in order to substantiate the request for acceleration:

As a first argument, the opponent argued that the concerned patent was so blatantly invalid that acceleration was warranted for that reason alone. The patent proprietor naturally disagreed. The Board of Appeal held that no assessment of the patent’s strength or weakness could be made at the early stages of the appeal procedure and therefore dismissed the opponent’s first argument.

For the second argument, it was significant that the opponent’s worldwide vaccine R&D and production center is based in Belgium. The opponent explained to the Board that on application (possibly ex parte) by patentees for preliminary measures, the Belgian courts do not consider the validity of patents even in cases where a revocation decision is suspended pending appeal. And also, supported by "similar facts" evidence relating to the proprietor's past conduct, the proprietor has made such applications in the past. The mentioned preliminary measures include a so-called saisie contrefaçon which is very effective, but also very far reaching in terms of attainability to preserve evidence prior to commencing an infringement action.

Taking the arguments from both sides and in particular the Belgian courts’ approach in such cases into account, the Board of Appeal came to the conclusion that the appeal procedure shall indeed be accelerated as justified by the second argument from the opponent. In other words, due to a threat of facing a saisie contrefaçon procedure in Belgium on the basis of a European patent revoked in the first instance, the opponent was entitled to accelerated proceedings in the appeal against the revocation.

However, the Board also expressly stated that “… its views relate only to the particular facts of these present cases and are not intended to set any precedent for application beyond those facts.” Hence, whether or not appeal procedures before the EPO are accelerated upon request remains to be decided on a case-by-case basis.

Upon request by a party, proceedings before the European Patent Office (EPO) may be accelerated. Possible scenarios for accelerating proceedings before a Board of Appeal are given in the Notice from the EPO’s Vice-President Directorate-General 3 dated 17 March 2008 (recently published in OJ EPO 1/2014, 63). According to this Notice, acceleration is always a matter for the exercise of the Board’s discretion.

The procedure underlying interlocutory decision T 895/13 of 28 March 2014 concerned an opposition in which in the first instance before the Opposition Division, the patent was entirely revoked. The patent proprietor appealed the revocation, and at the appeal stage the opponent requested an accelerated appeal procedure. Two major arguments were advanced in order to substantiate the request for acceleration:

As a first