ANNUAL REVIEW

Patents & Trademarks 2017

April 2017  |  INTELLECTUAL PROPERTY

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Patents and trademarks play a vital role in driving profitability, serving key components of many companies’ business model. Without patents and trademarks, companies would be unable to differentiate themselves from the competition. As such, it is imperative they take adequate steps to protect their IP wherever possible. Company should have a robust and appropriate IP strategy in place – one that includes monitoring and detection processes across relevant markets, as well as continual review and renewal.

 

CANADA

Peter E.J. Wells

McMillan LLP

“The two biggest developments for the future of patents and trademarks in Canada are the free trade agreements firstly with Europe, formally known as the Comprehensive Economic and Trade Agreement (CETA), and secondly with 11 other Pacific Rim countries, formally known as the Trans-Pacific Partnership (TPP). Both agreements contain extensive provisions dealing with intellectual property (IP), particularly copyright, patents and trademarks. However, if and when they come into effect is uncertain.”

 

MEXICO

Jean Yves Peñalosa Sol La Lande

Müggenburg, Gorches y Peñalosa, S.C.

“On 30 August 2016, an amendment was made to the Mexico Industrial Property Law (LPI) for including an opposition proceeding by which third parties may oppose the registration of a trademark. For such purposes, all registration applications submitted with the Mexico Trademarks Office (MTO) are published in the Industrial Property Gazette for the knowledge of third parties and any opposition arguments must be submitted to the MTO within one month. On 16 December 2016, additional amendments were made to the LPI’s regulations in order to add an online system allowing applications or writs to be submitted to the MTO.”

 

UNITED KINGDOM

Nicola Baker-Munton

Stratagem IPM Ltd

“A significant development in European IP law is finally being implemented: the option to select Unitary Patent (UP) protection via the classical European application system is likely to be available in December 2017. A UP will cover up to 25 Member States and patentees will benefit from a centralised administration procedure and litigation via a new Unified Patent Court (UPC). The conventional system of granting European patents (EPC) will remain, sitting alongside the UP system. Commentators remain optimistic that despite Brexit a legal solution will be enacted to allow the UK to remain a member of the UPC agreement; the rights of European patent attorneys are unaffected.”

 

NETHERLANDS

Tjeerd Overdijk

Vondst Advocaten

“In 2016, two new sets of rules concerning trademarks became effective under the so-called EU trademarks package. The package consists of a new harmonisation directive which entered into force in January 2016. Member States have until 14 January 2019 to bring their national laws in line with the new EU directive. In addition, on 23 March 2016, the new EU Trademark Regulation (EUTMR) came into force. The EUTMR introduces a new fee structure in which one fee per class will be implemented. It stipulates that class headings must be specified. It allows trademark holders to act against goods in transit and preparatory acts in relation to packaging, labels or other material bearing the infringing marks.”

 

GERMANY

Peter Chrocziel

Freshfields Bruckhaus Deringer

“The most important development in the area of patent law is probably the ‘revival’ of the Unified Patent Court (UPC) and the European Patent with Unitary Effect. The former is based on an international treaty and the latter on a European Regulation that entered into force in January 2013. Both are interconnected, and the European Patent with Unitary Effect will only be applicable once the agreement on the UPC enters into force. This entry into force requires the ratification of the UK, which has been cast into doubt by the Brexit vote. With the UK’s ratification pending, the UPC and the European Patent with Unitary Effect are expected to come online in December 2017.”

 

SWEDEN

Per Josefson

Mannheimer Swartling Advokatbyrå AB

“On 1 September 2016, a new judicial system entered into force in Sweden for intellectual property (IP) cases including patent and trademark disputes. As a consequence of the changes, the previous market court and the patent appeals court ceased to exist and the new patent and market court and patent and market appeals court came into existence. The reform focuses on increased specialisation among judges and means that the adjudication of disputes, which previously took place across the country, is now concentrated in Stockholm. In addition, a new regional division of the Unified Patent Court (UPC) will be formed for Sweden and the Baltic States. The division will be located in Stockholm.”

 

ISRAEL

Kfir Luzzatto

Luzzatto & Luzzatto

“In a recent ruling of the Patent Office, Israel Aerospace Industries Ltd. (IAI) and its Elta Systems subsidiary, both state-owned defence companies, battled against the patent application by Rafael Advanced Defense Systems Ltd., another government-owned defence company, for an advanced weapons system developed by the latter. The ruling, which is currently under appeal at the District Court, is singular in the depth of analysis that was carried out by the Deputy Registrar of Patents and may have a real impact on the way that defence companies approach patenting from now on.”

 

CHINA

Deanna Wong

Hogan Lovells LLP

“Regarding patents, in March 2016, the Supreme People’s Court (SPC) published the Interpretations on Certain Issues Concerning the Application of Law in the Trial of Patent Infringement Cases (II), which contains some important changes. For example, the courts can now dismiss an infringement action when a patent is initially invalidated by the Patent Re-examination Board (PRB) without the need to wait for the final administrative judgment. In addition, several sources report that the government is working on a new draft patent law, which will likely propose several significant changes.”

 

SOUTH AFRICA

Muhammed Vally

MViP Attorneys

“No major legislative developments have been seen recently, apart from the publication of, and call for, comments to a revised intellectual property (IP) consultative framework by the government in July 2016. This follows on from the release of a 2013 draft IP policy which received criticism across various fronts. The framework essentially seeks to promote certain objectives that the government feels should be accounted for within industries. One of the main pressing issues is the conversion of the current deposit system for patents in South Africa into an examining jurisdiction. No doubt this will be followed with interest by local and foreign-based South African patentees.”


CONTRIBUTORS

Freshfields Bruckhaus Deringer

Hogan Lovells LLP

Luzzatto & Luzzatto

Mannheimer Swartling Advokatbyrå AB

McMillan LLP

Müggenburg, Gorches y Peñalosa, S.C.

MViP Attorneys

Stratagem IPM Ltd

Vondst Advocaten

 


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