The Internet Corporation for Assigned Names and Numbers (ICANN) has released a document called “Proposed Measures for Letter/Letter Two-Character ASCII Labels to Avoid Confusion with Corresponding Country Codes”. Under the measures proposed in this document, governments and independent country code Top Level Domain (ccTLD) operators would be given the first option on a list of currently-blocked two-character new generic Top Level Domains (gTLDs). These domain names are ones that reflect various ccTLD extensions and which have caused some governments to worry about the risk of confusion with their own TLD. Continue Reading
These days, licensing between affiliate members of a multinational corporate family is prevalent. While reaching agreement between friendly parties on licensing terms may be easier than it normally would be between arms-length parties from an economic perspective, these transactions are likely to come under intense scrutiny from the relevant tax authorities worldwide.
Understanding the value of not just the assets at issue in the license, but the intangible assets that each party to the license brings to the table, is essential not only for determining arm’s-length licensing terms but also for defending those terms in court. Medtronic Inc. successfully convinced the U.S. Tax Court that the manufacturing trade secrets and know how held by its Puerto Rican subsidiary were incredibly valuable to not only the production, but also the development, of its Class III medical devices. Indeed, the intangible assets of Medtronic’s subsidiary were so important the court attributed to it more than half of intercompany sales revenue in arriving at a fair market value royalty rate.
Original publisher; Bloomberg BNA, Tax Management Transfer Pricing Report™, Vol. 25 No. 7, August 11 2016. Reproduced with permission from Copyright 2016 The Bureau of National Affairs, inc. (800-372-1033) http://www.bna.com/
On August 12, the U.S. Department of Justice Antitrust Division (DOJ) and Federal Trade Commission (FTC) proposed updates to their Antitrust Guidelines for the Licensing of Intellectual Property (Guidelines). The agencies have not been amended the Guidelines since they were originally released in 1995. The revisions do not substantively modify the general principles of the 1995 Guidelines, and they do not address some of the hottest topics at the intersection of antitrust and IP law, notably conduct involving standard essential patents (SEPs) and patent assertion entities (PAEs).
The two-step patent eligibility test
The Supreme Court’s decision in Alice applied the two-step test for patent eligibility set forth in Mayo. The first step is to evaluate abstractness, and the second step is to evaluate inventiveness. In DDR Holdings, the Federal Circuit further explained that a problem-solution approach rooted in technology works best in studying claims under the two-step test. In Enfish, the Federal Circuit clarified that “[s]oftware can make non-abstract improvements to computer technology just as hardware improvements can” – enabling software alone to satisfy the “abstractness” inquiry. Later in BASCOM, the Federal Circuit explained that a rearrangement of conventional steps can satisfy the “inventiveness” inquiry: “[the patent] describes how its particular arrangement of elements is a technical improvement over prior art ways of filtering.”
The Eligibility-proof Specification
There is no doubt that the higher courts are examining patent specifications with a fine-tooth comb for technical underpinnings for the claims. The better the specification – addressing a problem-solution approach; describing technical improvements; or providing comparative analysis of prior technologies – the better the chances that the claims will survive eligibility challenges.
Recent Federal Circuit decisions give hope for subject matter eligibility in the software and computer arts where the entirety of the specification is given weight.
Not long after my article discussing the interplay between the Defend Trade Secret Act (DTSA) injunction provisions and California non-competition law, a federal district court in the Northern District of California opined on this exact issue in Henry Schein, Inc. v. Cook, No. 16-CV-03166-JST, 2016 WL 3418537 (N.D. Cal. June 22, 2016).
In Schein, the court issued a preliminary injunction under the DTSA and state trade secret law prohibiting the former employee, Cook, from accessing or using trade secrets that she e-mailed to herself, but declined to enjoin her from contacting or doing business with customers of her former employer Henry Schein, Inc. (HSI). The court based its ruling on Cal. Bus. & Prof. Code Section 16600 (Section 16600), which prevents courts from enforcing contractual non-compete provisions, and on its determination that HSI failed to demonstrate that an injunction was “necessary” to prevent trade secret misappropriation, as required by the “trade secret exception” to Section 16600.
Plaintiff HSI specializes in the marketing of medical, dental, and veterinary supplies to healthcare professionals and organizations. Defendant Cook was a sales consultant at HSI and had signed a Confidentiality and Non-Solicitation Agreement, wherein she agreed to “neither copy nor take any [confidential] material upon leaving Company’s employ” and to not “solicit the patronage of any past or then-current customer of the Company.” After working at HSI for over 10 years, Cook left to work for one of HSI’s competitors. Continue Reading
In a recent appeal, China’s Supreme People’s Court (“SPC“) found in favour of Michelin against Sen Tai Da and related parties (“Sen Tai Da“) for trademark infringement. The SPC’s decision is significant in that it authoritatively confirms the emerging trend to take the reputation of a mark into account when determining the level of the – somewhat discretionary – statutory damages in Chinese trademark cases. In the case at hand, the SPC explicitly recognized the robust reputation of Michelin’s marks, and raised the statutory damages awarded from RMB 60,000 to 500,000 (around US$ 75,000). Continue Reading
On 23 June 2016, the Guangdong Higher People’s Court handed down its long-awaited judgment in the New Balance/新百伦-case. In its judgment, the Court upheld the finding of trademark infringement by New Balance, but reduced the damages granted in first instance from RMB 98 million by nearly twenty-fold, to ‘only’ RMB 5 million (approximately USD 750,000). This judgment comes in the wake of the Castel judgment handed down by the Supreme People’s Court, which reduced the damages granted by a lower court in a somewhat similar case of opportunistic trademark filing by a local Chinese entity. The New Balance judgment was long-awaited, because the damages that New Balance was ordered to pay in first instance were seen by many as excessive, and as a further incentive for trademark squatting in China.
EUIPO’s Boards of Appeal have recently introduced expedited appeal proceedings to deal with urgent cases. Requests for this option can be submitted by appellants together with the statement of grounds or, for defendants, with their reply. It appears unlikely that the Boards will set expedited proceedings of their own motion.
As to formalities, there’s no additional fee for expedited proceedings. A separate document must be filed which explains why the case is urgent and what harm would be caused if the appeal proceedings are not accelerated. In certain circumstances, documentary evidence must also be provided, for example in support of a claim that parallel infringement proceedings have been suspended pending the outcome of the appeal, giving rise to a serious risk of damage if the appeal is not expedited (example provided by the EUIPO).
If the request is granted, expedited appeals will be treated with priority and the parties will in principle be limited to only one set of submissions. Statutory time limits are unaffected.
The single member decision trend
While discussing appeal proceedings, we have noticed a rise in appeals decided by a single member of the Boards instead of being dealt with by the usual panel of three members. The basis of these decisions in appeals concerning Article 7 EUTM is Decision 2014-3 of the Board’s Presidium issued two years ago. However, in Article 2, the Decision also clarifies that where the single member considers that the contested decision taken by the examiner has to be annulled completely or in part, the full panel must decide on the case.
Swift and effective dispute resolution is crucial for brand owners and the fact that such a principle is increasingly recognised is a positive development. The European Patent Office introduced accelerated proceedings before its Boards in 2008 and the General Court in Luxembourg has had them in place since 2001. We are keeping an eye on developments in this direction in the EUIPO and look forward to reporting on key cases as they arise.
We’ve added Vietnam to the jurisdictions on Hogan Lovells’ LimeGreen IP. You can find three new topics focused on guiding you through the following areas of IP law in Vietnam:
In accordance with Vietnamese IP Law, the author and copyright holders are defined as (i) Vietnamese organizations and individuals; (ii) foreign organizations and individuals whose works to be protected were first published in Vietnam and not yet published in any other country, or whose works were published in Vietnam within thirty days from the date of the first publication in another country; and (iii) foreign organizations and individuals whose works have been protected in Vietnam in accordance with an international treaty on copyrights to which Vietnam is a member.
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Trademark prosecution varies from country to country. The ways to register and the requirements of registration vary as do the extent or length of protection provided in each jurisdiction. Maintaining and enforcing an international brand requires a coordinated strategy that covers many different laws and legal systems
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In Vietnam, provisions on unfair competition are found in both the Competition Law and the Law on Intellectual Property (the “IP Law”), though only the Competition Law provides a definition, which refers to acts that run contrary to good conscience in business practice. The Competition Law mentions some typical acts of unfair competition in general while the IP Law provides an exhaustive list of acts of unfair competition in the intellectual property field. When acts of unfair competition occur in the field of intellectual property, both the Competition Law and the IP Law shall be applied for enforcement. This section shall provide a brief overview of unfair competition in Vietnam with a focus on the intellectual property field.
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On 4 July 2016, the State Administration of Industry and Commerce (“SAIC“), the regulatory body charged with enforcing, among other things, the People’s Republic of China Advertising Law (revised with effect from 1 September 2015) (“Advertising Law“) released the Administration of Online Advertising Interim Measures (“Interim Measures“; in Chinese <互联网广告管理暂行办法>), which will come into effect on 1 September 2016. These will be the first set of national level rules specifically regulating advertising activities through the Internet and other online media. This is in line with the Chinese government’s earlier attempts to regulate virtually all areas of cyberspace, see our previous client alerts here, here and here.