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LimeGreenIP News

Interview – Future IP Challenges: What companies in the Internet of Things space can expect

CablesBEIn this hoganlovells.com interview, Hogan Lovells partner Dr. Chris Mammen looks at the platforms that could emerge to dominate and drive the internet of things (IoT) space and the related patent and licensing issues that will emerge.

“This is a very exciting and rapidly developing time where control over the IP is going to lead to the power to frame the discussion and influence the market,” said Mammen.

How important is IP to the successful evolution of the internet of things?

Mammen: Control of the intellectual property (IP) around the IoT is going to be a major factor in how the IoT comes together and what platforms ultimately emerge. This is a pattern we saw develop in the mobile telecommunications industry. I think we may be on the verge of seeing similar IP-focused competition in the IoT space.

There are many industry sectors that have IoT emerging markets. In the utilities space, we see smart grids and smart meters; in automotive, we are increasingly seeing connected cars; and in the consumer products industry there are all kinds of things happening like smart lighting, kitchen gadgets, and thermostats. Even farming is turning towards the IoT.

Read the full interview here and catch-up on our other recent IoT news here.

In Landmark Decision, U.S. Supreme Court Limits Patent Venue

USSupremeCourt_1146913On May 22, 2017, the Supreme Court issued a decision in TC Heartland LLC v. Kraft Foods Group Brands LLC on the hotly contested issue of patent venue reform.  The patent venue statue provides two grounds for laying venue. Under 35 U.S.C. § 1400(b), venue in a patent case may be laid where the defendant (1) “resides,” or (2) “has committed acts of infringement and has a regular and established place of business.”  The TC Heartland decision addresses the residence basis for venue—more specifically, the determination of residence for domestic corporations. Continue Reading

German tax treatment of royalties regarding software license and database licenses

– Draft guidance of German Federal Ministry of Finance released for discussion purposes

Explaining ideaYesterday the German Federal Ministry of Finance (Bundesfinanzministerium) released a draft circular on the German tax treatment of royalties paid for software and database licenses granted by non-resident licensors (the draft can be found here).

The draft is highly important to clients (i) having licensed software and databanks to German customers or using German distributors, or (ii) paying royalties for licenses to foreign licensors with regard to software or databases.

Background and impact

Pursuant to Sec. 50a para. 1 no. 3 of the German Income Tax Act (Einkommensteuergesetz) a licensee being resident in Germany is obliged to withhold German tax at a tax rate of 26.375% from a consideration payable for the usage of an intangible asset, e.g. patent, or the usage of scientific findings, experiences or anything comparable. Such withholding tax will, however, only apply, if the non-resident licensor is subject to German (corporate) income tax liability with regard to the royalties received.

Whether a German tax liability exists and, as a consequence, a royalty is subject to German withholding tax, has been discussed intensively with the German tax authorities for decades. In the case of end-users, the distinction is mainly based on the question of whether software has been modified to fit the individual needs of the customers (individual software: withholding tax) or not (standard software: no withholding tax). If a license was granted to a resident distributor, case law of the German Federal Tax Court exists pursuant to which a royalty paid by a resident distributor to non-resident licensor is subject to German withholding tax – if the distributor also has the permission to modify/reproduce software.

A number of tax audits are ongoing in which the withholding tax treatment of royalties paid to foreign licensors or database providers are under scrutiny of the German tax auditor.

Core statements of the draft Continue Reading

Hogan Lovells strengthens global M&A and technology transactions practice with market-leading Northern California team of Climan, Flaum, Ross, and Brockland

Golden Gate Bridge and San Francisco BayWe are delighted to welcome market-leading M&A partners Richard Climan, Keith Flaum, and Jane Ross, and IP and Technology Transactions partner John Brockland, who have joined Hogan Lovells.

John Brockland focuses on strategic and commercial transactions involving the development, transfer, and licensing of technology and intellectual property assets. He has represented companies in a variety of industries, such as software, semiconductor, internet, renewable energy, and healthcare.

Brockland has been ranked as a leading lawyer for IT & Outsourcing by Chambers USA and Chambers Global. He is ranked Band 1 in California — IT & Outsourcing: Transactions. He earned his B.A. from Trinity University and his J.D. from the University of Chicago Law School.

Read our full press release here

US: Our patent lawyers speaking at 2017 Rocky Mountain IP & Tech Law Institute

shutterstock_225353329We are proud to be sponsoring and speaking at the 15th Annual Rocky Mountain IP & Technology Law Institute. The June 1-2, 2017 event in Denver, Colorado brings together national practice and thought leaders, along with PTO and PTAB representatives, for special plenary sessions and networking.

Two of our patent lawyers will represent the Denver IPMT practice at the conference. Partner Lucky Vidmar and Associate Katy Rankin will speak on the June 2nd patents educational track, with a session titled “Life After PTAB: Estoppel and Courts.”  Also, our Senior Advisor Gretchen West will participate on the plenary panel entitled “IP 2025 – The Future Today,” where she will give her insights on the future of drone technologies.

The Hogan Lovells IPMT group in Colorado acts as lead counsel on transactions and cases in a wide range of industries, including telecom, software, life sciences, energy and consumer goods.

Please click here to view the full agenda and register for the 2017 Rocky Mountain IP & Technology Law Institute.

Date: Thursday-Friday, June 1-2, 2017

Location: Westin Westminster Hotel, Westminster, CO

Presenting Sponsor: Hogan Lovells

CJEU to rule on press publishers’ neighbouring right

With decision of 8 May 2017, the regional Court of Berlin referred to questions for preliminary ruling to the Court of Justice of the European Union (CJEU). The court is concerned whether the rules on the press publishers’ neighbouring right – as implemented into German copyright law in 2013 – were properly enacted back then. Specifically, the judges wish to receive some indication and guidance on whether the German legislator should have notified the European Commission in accordance with the Directive 98/34/EC laying down a procedure for the provision of information in the field of technical standards and regulations and of rules on Information Society services when enacting Secs. 87f to 87h of the German Copyright Act. This did not happen. Accordingly, the question now raised by the court is truly crucial as failure to notify the German bill leads to the domestic statute being deemed inapplicable.

The Case

tablet2BEThe original case was brought before court by the collecting society VG Media and the defendant is Google. As part of Google’s services, short text passages, so-called “snippets“, are displayed as part of the individual search result. Those snippets sometimes happen to be taken from digital press publications. Usually, there is no explicit authorisation being obtained from the respective press publisher. Rather, Google acts on the assumption that such snippets may be displayed without any particular license. VG Media takes a different position in this respect and thus took Google to court. Continue Reading

Hogan Lovells Recruits Akira Endo as Consultant

TokyoBE2Hogan Lovells has recruited Akira Endo, former head of global brand legal management at Kao Corporation as a Consultant of the firm’s trademark practice. The appointment is a further step in enhancing the firm’s capabilities to provide services tailored to clients in Japan, including consulting services.

Akira is a highly accomplished trademark professional with over 35 years’ experience at Kao, a leading consumer and cosmetic products maker, parent of Kanebo Cosmetics company, and one of the most widely recognized brands in Japan. At Kao, Akira was head of global brand legal management since 2007, and was responsible for the full range of global trademark matters including trademark and design clearance, filing applications, and securing and maintaining registrations for all trademarks and designs to be used by Kao group companies.  Akira is a well-known figure industry-wide, and has also served as Vice President of the Japan Trademark Association (JTA) and headed the Trademark Committee for the Japan Cosmetic Industry Association.

Lloyd Parker, Tokyo Office Managing Partner and Head of IP Asia Pacific & Middle East, said:

“We are very excited about the appointment as we have been considering how we can further support the needs of our clients in Japan for some time, and to do this, we felt that an “inside perspective” was essential. Akira’s deep experience will reinforce our understanding of Japanese clients’ needs, which will help us enhance the quality and breadth of our services in Japan.”

Digital Single Market: Commission takes stock at halftime

The European Commission is taking stock of what has been accomplished regarding its Strategy for a Digital Single Market. Two years ago, on 6 May 2015, Commissioners Oettinger and Ansip announced their strategy to create a single European market in the online world. Such market should rest on three pillars: (1) better access for consumers and businesses to digital goods and services across Europe; (2) creating the right conditions and a level playing field for digital networks and innovative services to flourish; (3) maximising the growth potential of the digital economy.

Back in 2015, President Jean-Claude Juncker said:

Today, we lay the groundwork for Europe’s digital future. I want to see pan-continental telecoms networks, digital services that cross borders and a wave of innovative European start-ups. I want to see every consumer getting the best deals and every business accessing the widest market – wherever they are in Europe. Exactly a year ago, I promised to make a fully Digital Single Market one of my top priorities. Today, we are making good on that promise. The 16 steps of our Digital Single Market Strategy will help make the Single Market fit for a digital age.”

Yesterday, the Commission published its Mid-Term Review. The picture that is drawn is – no wonder – a positive one. And indeed, the Commission has pushed the idea of a digital single market quite intensively. Reference is made to not less than 35 legislative and political initiatives. Many of them grounded on public consultations which were concerned with a broad variety of topical aspects of today’s digital world. The Commission emphasizes that it is the aim to address the true needs of enterprises as well as consumers across Europe. Continue Reading

Emerging patent law issues: IoT webinar update

ONbuttonOn 20 April, Hogan Lovells hosted the second instalment of the 2017 webinar series on emerging issues with the Internet of Things (IoT). This instalment focussed on the potential patent law issues presented by IoT technology.

Dr. Chris Mammen, a partner in Hogan Lovells San Francisco office, considered how these issues can impact companies in the IoT space, and discussed what companies should do now to prepare for the inevitable disputes that will arise.

The IoT creates many opportunities for patent protection: from sensors and processors, to transmitters, hubs and servers, and even the processing algorithms themselves. Companies in this space must think about which areas are or will be of most value (and how these can be protected) and which areas have the potential to cause problems now or in the near future.

The range of potentially patentable areas gives rise to a number of issues which were considered on the webinar. These include:

Continue reading on HL GMC Watch blog

WIPO – UDRP: Proof of bad faith registration crucial

.CARIn a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a panel denied the transfer of a domain name mainly based on the lack of evidence about the Respondent’s bad faith upon registration of the domain name in dispute.

The Complainant was Zeca S.p.A of Feletto Canavese, Italy, a manufacturer of accessories and spare parts for motor vehicles and vehicle mechanics.  Founded approximately 60 years ago, the Complainant owned many registered trade marks for ZECA, including an international trade mark registered on 5 February 1991, designating a number of territories in Europe and in Asia.  The Complainant was also the registrant of numerous domain names incorporating its trade marks, such as <zeca.it>.

The Respondent was Domain Vault LLC, a company based in the United States.

The Domain Name was <zeca.com>, registered on 25 October 2003.  It was used to resolve to a parking webpage comprising links to a number of third party websites primarily related to music and music promotion. Continue Reading