ANNUAL REVIEW

Patents & Trademarks 2015

February 2015  | INTELLECTUAL PROPERTY

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Patents and trademarks form an integral part of a company’s intellectual property (IP) portfolio. For the modern business, obtaining and protecting IP rights is an increasing necessity for businesses, regardless of size and sector. Globally, 2014 was a significant year for legislative and regulatory developments in the patents and trademarks space. Legislation, such as the Intellectual Property Act 2014 in the UK and Law No 2014-315 in France, has played an important role in helping to frame the European discussion around patents and trademarks. Equally, the process of defining the European unitary patent has continued apace. Across the Atlantic, the American Invents Act, one year after its implementation, continues to play an important role in helping the US to transition to a new system of patent filing.

 

UNITED STATES

Gary Hood

Polsinelli PC

“The America Invents Act (AIA) continues to affect patents in the US, having changed the country from a ‘first to invent’ to a ‘first inventor to file’ patent system. Parties have also started to gain experience with new forms of post-grant proceedings ushered in by the AIA, particularly Inter Partes Review (IPR) and Covered Business Method Patent Review (CBM). Both are proving to be effective tools for challenging patents outside of the courtroom. IPR has proven an effective and faster alternative to traditional litigation in federal courts, often at a fraction of the cost. CBM has afforded parties an effective alternative to challenge such patents.”

 

CANADA

Peter E.J. Wells

McMillan LLP

“Canada made significant changes to both the Patent Act and the Trade-marks Act in 2014. The patent legislation was passed on 16 December 2014, although the government has indicated the changes won’t come into effect until late 2015 or possibly early 2016. The primary purpose of the patent amendments is to give effect to the Patent Law Treaty, which Canada became a signatory to in 2001. The treaty hopes to harmonise patent office practice around the world. Some of the revisions to the Trade-marks Act, including new offences intended to make it easier to prosecute counterfeiters, are already in effect.”

 

BRAZIL

Gabriel Di Blasi

Di Blasi, Parente & Advogados Associados

“Concerning regulatory developments in Brazil, it is important to clarify that Brazilian regulatory and administrative agencies related to IP matters constantly issue normative resolutions in order to render the primary IP Brazilian Law No. 9,279 of 1996 effective. That law notwithstanding, Bill No. 5402 of 2013 is currently pending. The bill is aimed at amending some of the patent provisions in existing Brazilian IP Law. The proposed changes are considered restrictive for IP rights, and discourage innovation in the pharma field, because not only do they reduce the patent term and encompass the prohibitions for patent protection, they also modify the criteria for patentability.”

 

UNITED KINGDOM

Simon Kremer

Mewburn Ellis LLP

“The Intellectual Property Act 2014 came into force on 1 October 2014, making a number of changes to the UK Patent Act. One of these changes was in relation to a so-called ‘bolar’ type patent infringement exemption for acts done in, or for the purposes of, a medicinal product assessment. Although no doubt welcome to those entities considering drug trials in the UK, the ambiguity around the scope of the more general “experimental use exemption” was, and remains, arguably of more significance to most researchers, particularly those universities working with industry.”

 

GERMANY

Gösta Schindler

Quinn Emanuel Urquhart & Sullivan, LLP

“The most notable development concerned procedural issues in patent law. As part of IP enforcement strategies, those developments may very directly influence business decisions. In the still ongoing process of creating the European Unitary Patent, it was announced in 2014 that Munich, Hamburg, Mannheim and Düsseldorf will host the court’s local divisions in Germany. Those venues have historically already been the most important for patent matters, as well as other IP disputes. The decision to award these courts the seats of the local divisions of the Unified Patent Court confirms and strengthens the significance of these venues for IP actions.”

 

FRANCE

Olivier Banchereau

Jones Day

“Act No 2014-315, whose provisions are intended to reinforce the arsenal at the disposal of patent and trademark owners, provides that, firstly, the statute of limitation for patent and trademark infringement be extended from three to five years. Secondly, it provides that the judge, when assessing the prejudice suffered due to an infringement, should consider several factors, namely the psychological harm and loss of profits of the infringed party, as well as the benefits gained by the infringer, which includes any intellectual, material and advertising investments made by the patent or trademark owner.”

 

SWEDEN

Michael Plogell

Wistrand Advokatbyrå

“Parliament has recently passed a bill on changes to the Swedish Patents Act, meaning that for Swedish patent applications with a filing date of 1 July 2014 or later, the applicant can request that the patent be granted in Swedish or English. The patent documents – description, patent claims and abstract – must only be filed in one language, and there are limited possibilities for the applicant to change languages after the application has been assigned a filing date. For patents that are to be granted in English, the applicant must translate the patent claims into Swedish and submit the translation at the same time as paying the granting fee for the patent.”

 

CHINA & HONG KONG

Deanna Wong

Hogan Lovells LLP

“The most recent development that comes to mind is the establishment of specialised IP courts in China’s three main hubs: Beijing, Shanghai and Guangzhou. This is very promising news, as the judges that have been appointed so far are all senior judges with excellent track records in IP litigation. The new courts are now up and running, and we are curious to see what impact they will have on the quality and speed of IP litigation in China, once the dust has settled.”

 

AUSTRALIA

Lynne Peach

Minter Ellison

“On 15 April 2013, Australia’s Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) came into full effect, introducing significant changes to patents, trade marks, copyright, designs and plant breeder’s rights legislation. These changes included an overhaul of the Customs Notices of Objection regime involving a reversal of the onus to take action. Importers of alleged infringing goods are now required to take positive steps to seek to have the goods released. Only if the importer seeks to have the goods released is the trade mark owner then required to take action to seek to secure the destruction of the infringing goods.”

 

NEW ZEALAND

Owen Culliney

James & Wells

“In September 2014 the Patents Act 2013 came into force. The new Act gave the old Act a well overdue overhaul. The two most significant changes relate to how examiners consider a patent application, as well as the limits that are placed on the patentability of software. Patents will now have to pass an ‘inventive step’ test which inevitably raises the threshold to be met by hopeful applicants. The new threshold will make it even more critical to involve a patent attorney before filing a patent application.”


CONTRIBUTORS

Di Blasi, Parente & Advogados Associados

Hogan Lovells LLP

James & Wells

Jones Day

McMillan LLP

Mewburn Ellis LLP

Minter Ellison

Polsinelli PC

Quinn Emanuel Urquhart & Sullivan, LLP

Wistrand Advokatbyrå


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