Category: trademark

Recent International Decisions: IP Getting Stronger Outside the US

Recent IP decisions reinforce the view that outside the US, IP decisions more often favor patent and trademark holders.
China: One on the patent side, one on the trademark
Before 1985, China had no patent system, and many people have been skeptical of what system there is since then. But China recognizes the importance of protecting IP rights, and has even created an IP court in Beijing.
A patent holder, Iwncomm, is the owner of a standards essential patent (SEP), which means that it holds a patent for a technology that is required by any mobile operator that uses one of the essential standards (like 3G, 4G LTE for example). In a recent holding, an IP court ordered Sony to pay Iwncomm $1.3 million in damages and stop selling certain mobile devices that infringe Iwncomm's patent.
Iwncomm's injunction applies not just to products sold in China but also to exports of goods made in that country. Erick Robinson, the director of patent litigation at Beijing East IP Ltd., summed up the holding's broader implications. “Enforcement of standard-essential patents is an important issue throughout the world, specifically whether injunctions should be available in such cases...In China, the answer to this question is a definitive ‘yes.’”
A trademark ruling in favor of Under Armour ordered a knock off clothing maker called Uncle Martian (!) to pay $300,000 in damages, destroy its products, and cease infringing manufacture. The interesting thing to note here is that this result issued from the People’s Higher Court of Fujian Province, which a local provincial court. This gives rise to a growing belief that IP owners may find support to enforce their IP rights in Chinese courts, even outside the specialty ones.
UK: Easier to find equivalence infringement
To find infringement, an accused product must fall within the scope of the patent claims. The infringement can be literal, meaning the claims literally read on the accused product, or equivalent, meaning the claims don't literally read on an accused product but the difference between the accused product and claims is insubstantial (this last word being the US test). In the UK, proof of equivalents, until recently, required that a patent owner overcome the Improver inquiry.

The variant will not infringe if any of the following are true:

  • The variant has a material effect on the way the invention works.
  • The fact that the variant has no material effect on the way the invention works would not have been obvious to an expert in the field.
  • That an expert in the field would have taken from the language used in the patent that strict compliance with the primary meaning was an essential requirement of the invention.

The UK Supreme Court struck down this decision in Activis UK Ltd. v. Eli Lilly and Company. In an interesting decision that explores how other countries approach equivalents, the UK Supreme Court fount that "The second Improver question is more problematic. In my view, it imposes too high a burden on the patentee to ask whether it would have been obvious to the notional addressee that the variant would have no material effect on the way in which the invention works, given that it requires the addressee to figure out for himself whether the variant would work." In taking this position, the Court strengthened the perception that the EU in general and UK in particular, is a patent-holder friendly venue.

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Can You Get an International Trademark? The Madrid Protocol

An Article in Schott, P.C.’s IP Law For Start-ups Series
By Stephen B. Schott
dreamstime_s_33927980If you have valuable intellectual property, you may want international protection. For your patents, you can file an application under the Patent Cooperation Treaty or with the European Patent Office. For trademarks, you will want to consider a filing under the Madrid Protocol.
The Madrid Protocol permits a trademark owner to use their registered trademark or a pending application in their home country as a basis to request registration of the mark in one of the Madrid Protocol countries.
Here is a short summary of the requirements and prosecution steps for a trademark filing under the Madrid Protocol.
Madrid Protocol Filing Requirements
(1) The applicant must have a registered mark or application in its home country.
(2) The applied-for mark in the International Application must be identical to the home country mark.
(3) The goods in the International Application and home country application/registration must be identical.
(4) The goods identified in the International Application must be the same as the goods in the home country application/registration.
(5) The named owner of the International Application must be the same named owner of the home application/registration.
(6) Of course, the applicant must pay appropriate fees.
Madrid Protocol Trademark Prosecution
Here’s a simplified flowchart of how the Madrid Protocol works:
Applicants will want to note the following:
- Application is filed with the World Intellectual Property Organization (WIPO).
- If the application meets all formal requirements, WIPO grants international registration and forwards a request to all the country trademark offices designated by the applicant.
- Each country identified by an applicant will review the application in its own trademark office and grant or deny registration according to its own laws.
- Applicant can claim priority to the home country application if filed within 6 months of the home country filing.
- Applicant will save substantial money if there are no office actions issued against the mark (applicants may not have to engage attorneys in each country).
- Applicants cannot amend the drawing in an image mark during prosecution.
- Applicants cannot broaden the good/services beyond what was described in the home country application.
- Applicants cannot take any time extensions.
If you have questions, contact me.
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