Tag:Office Decisions

1
WIPO Updates Deadlines for Responses to Provisional Refusals
2
In Starch Contrast: Australian Patent Office Makes key Finding on use of Trade Marks in Patent Specifications
3
Honey, I Lost the Trade Mark: MANUKA HONEY Declared not Exclusive to New Zealand
4
Technical Effect Embodied in Technical Teaching
5
Singapore Maintains Hard-Line Take on Goodwill in Million-Dollar Wonton Noodle Feud
6
Substance Over Form: The Importance of Substantive Grounds in Parallel District-Court Litigation and Prior Petition IPR Denials in OpenSky Indus., LLC v. VLSI Tech. LLC
7
UAE to Join the Madrid Protocol
8
Trade Mark Re-filing and Bad Faith – Go Directly to Jail. Do Not Pass GO, Do Not Collect $200 – Part Two: General Court Ruling
9
PTAB’s Motion to Amend Patentability Powers
10
Copyright protection for Brompton’s folding bicycle? CJEU gives green light to the possibility across Europe

WIPO Updates Deadlines for Responses to Provisional Refusals

Businesses seeking registration of trade marks overseas will have greater clarity on deadlines for responding to provisional refusals, following an update by the World Intellectual Property Office (WIPO). As of 1 November 2023, local intellectual property offices are required to give the holders of Madrid System international trade mark registrations (IR Holders) a minimum period of 60 days or two months to respond to provisional refusals.

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In Starch Contrast: Australian Patent Office Makes key Finding on use of Trade Marks in Patent Specifications

In the field of intellectual property, the interplay between trade marks and patent claims is very rarely discussed, given the distinct scope of protection provided by each. In Australia and New Zealand, patent examiners tend to raise an immediate clarity objection when a trade mark finds its way into a claim. This concern arises from the fact that a trade mark is an identifier of origin, and products bearing them can undergo variations across jurisdictions and time frames. This makes the intended scope of the claim unclear in many situations. Consequently, Australian and New Zealand examiners commonly raise objections based on clarity when trade marks feature in patent claims during the examination process.

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Honey, I Lost the Trade Mark: MANUKA HONEY Declared not Exclusive to New Zealand

An attempt to trade mark the term MANUKA HONEY in New Zealand has come to a sticky end. Assistant Commissioner of Trade Marks Natasha Alley found that the term MANUKA HONEY was descriptive of the goods it claimed and MHAS had “fallen short of establishing the necessary distinctiveness, both inherent and acquired”.1

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Technical Effect Embodied in Technical Teaching

European Patent Office: Enlarged Board of Appeal decision G2/21

The Enlarged Board of Appeal EBoA is the highest judicial authority under the European Patent Convention. It handles patent examination for about 37 member states including the EU. The EBoA has recently published its decision G2/21 dealing with the principle of free evaluation of evidence in the context of inventive step. This decision is relevant for patents in the pharma, biotech and life science field.

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Singapore Maintains Hard-Line Take on Goodwill in Million-Dollar Wonton Noodle Feud

In Singapore, popular eatery “ENG’S Wonton Noodles” is known for its springy noodles, luscious wonton dumplings and fiery chilli sauce. Its popularity attracted more than S$1.6 million in revenue one year, but a fallout between the founder’s children and their business partners led to multiple disputes, including a dispute over trade mark rights to the “ENG’S” name in Pauline New Ping Ping v Eng’s Char Siew Wantan Mee Pte. Ltd. [2022] SGIPOS 10.

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Substance Over Form: The Importance of Substantive Grounds in Parallel District-Court Litigation and Prior Petition IPR Denials in OpenSky Indus., LLC v. VLSI Tech. LLC

On 23 December 2021, the Patent Trial and Appeal Board (“the Board”) instituted inter partes review (IPR) of U.S. Patent No. 7,725,759 B2 (“the ’759 patent”). See OpenSky Indus., LLC v. VLSI Tech. LLC IPR2021-01064, Paper 17 (Dec. 23, 2021). Petitioner OpenSky Industries, LLC (“OpenSky”) relied on expert declarations of Dr. Sylvia D. Hall-Ellis and Dr. Bruce Jacob originally filed by Intel Corporation in two other IPR proceedings (“Intel IPRs”).1 Indeed, the declaration included the same coversheet that accompanied the declaration in the Intel IPR. The Board analyzed OpenSky’s Petition under §314(d) and §325(d), declining to deny institution, finding, in part, that since Fintiv and General Plastic did not warrant discretionary denial, the arguments, which were almost identical to those made in the Intel IPRs, deserved to see their day in court at the PTAB.

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UAE to Join the Madrid Protocol

In great news for companies that file trade marks internationally, the Government of the United Arab Emirates has agreed to join the Madrid Protocol from 28 December 2021.

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Trade Mark Re-filing and Bad Faith – Go Directly to Jail. Do Not Pass GO, Do Not Collect $200 – Part Two: General Court Ruling

On 21 April 2021, the General Court of the European Union refused Hasbro’s appeal to overturn a decision that partially invalidated its EU trade mark for MONOPOLY on the ground of acting in bad faith when filing the application. The judgement by the General Court has ramifications for brand owners in both the law of bad faith but also in the practice of evergreening (repeatedly filing for an identical mark covering a broad specification of classes as the period of protection for the mark draws to an end).

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PTAB’s Motion to Amend Patentability Powers

In a 2-1 split decision on Wednesday, July 22, 2020, the Federal Circuit confirmed that the Patent Trial and Appeal Board (“PTAB“) had the authority to reject substitute claims under 35 U.S.C. §§ 101 and 112, statutory grounds not available to the PTAB for evaluating patentability of granted patent claims in inter partes review (“IPR“). (Uniloc 2017 LLC, v. Hulu, LLC et al., Case No. 2019-1686, slip op. at 3 (Fed. Cir. July 22, 2020).)

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Copyright protection for Brompton’s folding bicycle? CJEU gives green light to the possibility across Europe

On 11 June 2020, the Court of Justice of the European Union (CJEU) handed down its decision in the referral from the Belgium Companies Court (Tribunal de l’entreprise de Liège) arising from copyright infringement proceedings by Brompton Bicycle Ltd (Brompton) against a Korean company Get2Get Chedech (Get2Get) relating to its folding bike.

The decision is good news for designers and creative businesses as it lays a foundation for new opportunities for copyright protection and enforcement in Europe. This evolving area of law now requires a low threshold for protection, with a suggestion from the CJEU that minor creative choices in products will be sufficient for a finding of copyright protection.

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