The Supreme Court’s Adjudication on Whether a Post-grant Amendment of a Granted Patent Constitutes an Amendment of the Litigation Claim

When granted with a patent right, the patentee may file a request for amending the description, claim(s) or drawing(s) of the granted patent.  Hence, once an alleged infringer has presented prior evidence sufficient to establish that the patent at issue lacks patentability in a patent infringement litigation case, the patentee is likely to file post-grant amendment requests with the Taiwan Intellectual Property Office during the litigation proceedings in order to overcome the defects in the validity of the patent at issue.  At this point, pursuant to Article 32 of the Intellectual Property Case Adjudication Rules, “trial and adjudication of the principal case may directly proceed if the amendment application obviously shall not be granted or if the amended scope of claim(s), once approved, does not constitute an infringement of right.” Continue Reading

Out Of Character: Jersey Boys, Detective Stories, & The Case Of Space-Traveling Tardigrades

At heart, and still, I am a non-singing Jersey Boy, and one who grew up reading Sherlock Holmes stories and watching Star Trek, the Original Series (before it even needed that modifier), in reruns in the 1970s while also keeping up with the real Rocky.  And, I have been writing for ILN IP Insider for five and one half years (first article appeared in March 2015), and have shown my Star Trek chops and character knowledge here on several different occasions, like bouncing from planet to planet.  So, to paraphrase that famous opening, I have tried exploring “Law: the final frontier. These are the voyages of ILN’s enterprise. Its continuing mission: to explore strange new cases. To explain new rights and new rationalizations. To boldly show where lawsuits have gone before!” Continue Reading

Journalism and copyright: what is protected by copyright law?

In Greece the main legislative instruments regulating copyright and related rights are:

  • Law 2121/1993 on Copyright, Related Rights and Cultural Matters (the Copyright Law); and
  • Law 4481/2017 on the Collective Management of IP Rights and Related Rights and Collecting Organisations.

Continue Reading

IP CONSIDERATIONS FOR BUSINESSES OPERATING ONLINE – AN AUSTRALIAN PERSPECTIVE

Recent changes in consumer behaviour due to the COVID-19 pandemic mean that few businesses can afford to ignore the internet, and the opportunities for efficiencies and scale that it offers.  Operating a business online presents tremendous opportunities for growth by opening up new geographical markets, however it also creates new challenges for businesses in ensuring that their key intellectual property assets, which are made available online, are adequately protected.

So how can businesses manage their intellectual property, and ensure they are not infringing on the intellectual property rights of others, when trading online? Continue Reading

TRADEMARK USE: NO NEED FOR A “BRICKS AND MORTAR” PRESENCE IN CANADA

“Use it or lose it” is a staple expression known to Canadian trademark lawyers. Once a business successfully registers a trademark in Canada, it must “use” its registered mark in Canada or it may lose the protections provided by the Trademarks Act (the “Act“). With the advent of e-commerce, many non-Canadian businesses can now advertise their services to Canadians online. Demonstrating use of the mark in association with such services online by the non-Canadian business may prove challenging. Continue Reading

Patent Disputes in Life Sciences

Having vast expertise in providing legal protection to large Russian and international pharmaceuticals and healthcare companies, Lidings has put together a Legal Digest highlighting the most notable patents disputes in Life Sciences:

 

Can You Register a Copyright on a Short Work of Words and Artistic Designs?

Suppose that you have expressed your work into a tangible form such as a short expression of words and artistic designs.  Although your copyright exists upon the moment of creation, does the work contain a sufficient amount of authorship on which to base a claim for a copyright registration?  Should you register the copyright on the work with the U.S. Copyright Office?  The answer is YES!

In the United States, under 17 U.S.C. § 102(a),

“Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories: Continue Reading

Data Privacy and E-Commerce: Considerations for the Food and Beverage Industry

The global food and beverage e-commerce market is expected to grow to $22.4 billion in 2020, possibly reaching $36.4 billion in 2023. That’s up from $14.9 billion in 2019.  Food and beverage e-commerce revenue in the United States alone is projected to exceed $15.2 billion this year and $19 billion by 2022.

It’s no surprise that much of this recent uptick is due, in large part, to the global COVID-19 pandemic.  With most people now working from home and limiting in-person interactions, consumers have flocked online to purchase food, beverages and other essential goods.  And it’s not only online grocery and delivery services like Instacart and Amazon Fresh that are reaping the benefits of this increased consumer demand. Many food and beverage brands themselves have also added or shifted to direct-to-consumer e-commerce offerings. Where supply chain, shipping, and payment processing, among other things, previously made direct sales logistically unattainable and unprofitable, e-commerce became one of the most powerful tools for some in the food and beverage industry to stay relevant and accessible to their customers during the pandemic. Continue Reading

Supreme Court Unanimously Rules That Willfulness Is Not Required to Recover Profits

The U.S. Supreme Court resolved a circuit split on April 23, 2020, by unanimously holding in Romag Fasteners, Inc. v. Fossil Group, Inc., et al. that a brand owner is not required to prove that a trademark infringer acted willfully in order for the owner to be awarded the infringer’s profits.

Background

Romag Fasteners, Inc. (Romag) sells magnetic snap fasteners for leather goods under its registered trademark ROMAG, and Fossil, Inc. (Fossil) designs, markets and distributes fashion accessories. Romag and Fossil had entered into a license agreement that permitted Fossil to use Romag’s fasteners in Fossil’s handbags and other products. Romag later discovered that certain Fossil products contained counterfeit snaps bearing the ROMAG mark, so Romag sued Fossil in Connecticut district court for trademark infringement. During the trial, it was established that one of Fossil’s manufacturers in China consistently used counterfeit ROMAG snaps. Continue Reading

GENERIC.COM — REGISTRABLE IN CANADA?

The U.S. Supreme Court recently confirmed that a “generic.com” term may be eligible for federal trademark registration in the U.S., in certain circumstances. We will review the relevant decisions, discuss the Canadian legal framework with respect to registration of such mark and consider the implications of seeking registration of a “generic.com” or a “generic.ca” mark in Canada.

The Relevant Decisions

In United States Patent and Trademark Office v. Booking.com B.V, the travel reservation company Booking.com B.V. (“BBV“) sought to register four marks, each containing the term “Booking.com”, with the United States Patent and Trademark Office (“USPTO“). BBV offers its travel reservation services under the brand “Booking.com” and operates a website with the same domain name. Continue Reading

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