International IP

WIPO Launches “Green” Intellectual Property Marketplace

The World Intellectual Property Organization (WIPO) has launched a new online marketplace to connect buyers and sellers of “green” technologies.

The “WIPO GREEN” database and network is designed to match owners and inventors of green technologies with people or companies seeking to commercialize or license such technologies.

WIPO’s goal is to accelerate innovation and use of green technologies in order to address climate change.

Green technologies listed on the site include those dealing with:

  • Alternative energy production
  • Energy-saving technologies
  • New forms of transportation
  • More sustainable agriculture and forestry
  • Greener waste management

Those who are looking for green technologies can search the site for “assets.”

According to WIPO,

The database offers green technology providers greater visibility for their products, services and IP assets (including inventions, patents, technologies and know-how) for sale or license, helping to attract partners and finance.

Providers of green technologies can search for “needs” – including specific technologies and IP, funding, and professional services such as training.

The database is targeted at “investors, entrepreneurs and licensing managers looking to construct and execute deals in the green technology space.”

The service is free for all parties but registration is required.

The WIPO GREEN site is also a gateway to other WIPO services, such as WIPO’s IP Arbitration and MediationCenter.

WIPO is an agency of the United Nations.  It is a “global forum for intellectual property services, policy, information and cooperation” established in 1967.  It now has 186 member states.

More information on WIPO GREEN is available at https://webaccess.wipo.int/green/.

If you are the owner or developer of a green technology invention, or if you are seeking to license green technology IP rights, identifying a partner is just the first step.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

China’s New Trademark Law Takes Effect in May

China’s new trademark law, which takes effect May 1, 2014, is designed to discourage the trademark hijacking and piracy that have caused headaches for foreign companies attempting to do business in China.

In July of 2012, Apple paid a $60 million settlement to the Chinese company Proview Technology to acquire the right to use the iPad name in the Chinese market.  Proview had registered the name in China in the year 2000.  Apple also lost a claim that Proview was infringing Apple’s trademark when Proview sold its own “iPad” product.

Under the current version of the Chinese trademark law, foreign companies are subject to China’s “first to file” trademark system.  This system allows “trademark hijacking” by applicants who file Chinese trademarks that are similar or identical to trademarks used abroad.

These trademark applications are routinely granted.  The Chinese Trademark Office does not require applicants to establish that they have either used or intend to use the marks on actual products.

Foreign companies are then forced to buy back “their” trademarks when they wish to enter the Chinese market.  In addition to Apple, John Lewis, Sainsbury’s, and Top Shop are among the companies which paid to obtain the rights to use their marks in China.

Under the current law, a trademark registration made in bad faith or for a well-known mark may be cancelled.  However, the cancellation process is cumbersome and expensive.

Under the new law, trademarks must be registered and used “by the principle of honesty and credibility.”

A trademark application will be denied if the mark is identical to another party’s mark that has been used (but not yet registered) in China in connection with the same or similar products if:

  • The trademark applicant has a contractual or other business relationship with the other party and knows or should have known of the other party’s prior use of the mark;  and
  • The other party challenges the application.

The new trademark law also expands the list of actions that will constitute trademark infringement.  For example, it will be a violation of trademark law if someone purposefully facilitates or assists trademark infringement activities. This assistance can include transporting counterfeit goods.

Civil damages for trademark infringement have also been increased.  For “malicious” infringement, the trademark owner will be able to recover up to three times the owner’s loss or a reasonable royalty.  Trademark owners will also be able to recover their reasonable enforcement costs including trademark attorney’s fees.  Where it is difficult to determine the amount of the trademark owner’s loss, a Chinese court will be able to award compensation of up to three million Chinese Yuan (RMB) (about US$500,000).

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

European Patent Office Translation Service Covers 32 languages

A year ahead of schedule, the European Patent Office (EPO) added eight more languages to its free machine translation service for patents, bringing the total to 32.

The service now covers the 28 official languages of the EU’s member states, as well as Russian and several Asian languages.

According to the EPO’s website:

Patent Translate is now complete and covers translations between English and 31 other languages, namely Albanian, Bulgarian, Chinese, Croatian, Czech, Danish, Dutch, Estonian, Finnish, French, German, Greek, Hungarian, Icelandic, Italian, Japanese, Korean, Latvian, Lithuanian, Macedonian, Norwegian, Polish, Portuguese, Romanian, Russian, Serbian, Slovak, Slovenian, Spanish, Swedish and Turkish. Translation from and into French and German is also available for 17 of these languages.

The translation service is designed to aid patent offices, inventors, and businesses by providing access to information about patented technologies.

The translation service was launched in 2012 as a joint project between the EPO, Google, the patent offices of the EU member states, and other major patent offices.

The service receives about 12,000 patent translation requests per day.  Espacenet, the EPO’s patent database, contains more than 88 million patent documents from all over the world.

The EU is in the process of trying to implement a unified patent court system.  The EU’s Council of Ministers has backed the reforms and members of the European Parliament are expected to vote on them in March of 2014.

The new European patent law system would allow inventors to obtain a unitary patent that covers multiple European country jurisdictions by making a single application with the EPO.  This is expected to reduce costs for patent applications and increase innovation in Europe.

Under the current system, EU-wide patent protection is only available for patent holders who validate their patents in each EU member state.  The patent must first be translated into each state’s language – hence the need for the online translation service.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

New U.K. Orphan Works Law Causes a Stir

The United Kingdom recently approved the Enterprise and Regulatory Act. Among other provisions, it amends how British copyright law treats “orphan works.”

The Enterprise and Regulatory Act defines an orphan work as a copyrighted work for which the copyright owner cannot be found “after a diligent search made in accordance with the regulations.” If the owner cannot be found, the law allows media publications or others to obtain a license to use the image. The copyright license fee is then held should the rights holder come forward.

As Wired reports, many commentators broadly interpreted the law to mean that pictures from popular social media sites like Facebook and Instagram would qualify as orphan works, as it can be difficult the owners’ real name and contact information. The new law caused such a stir that the Intellectual Property Office stepped in to clarify it.

“Owners of photographs posted online will not lose control of their copyright under changes outlined in the Act,” said a spokesperson. “Nor do the changes mean anyone can use a copyright work without permission or free of charge. If someone copies a photo posted online they still need the permission from the rights holder of the photo to do so. If they don’t have this permission they will have to apply for and buy an orphan works license.”

Despite the Intellectual Property Office’s reassurances, critics of the law still contend that it will hurt photographers and other rights holders. They are specifically concerned with the stringency of the due diligence requirement for locating a work’s owners. The specific details of the licensing process are also still being flushed out with stakeholders. We will continue to monitor this legislation and provide updates as they become available.

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Supreme Court Rules “First Sale Doctrine” Applies to Goods Made Abroad

The U.S. Supreme Court recently announced its long-anticipated decision inKirtsaeng v. John Wiley & Sons, Inc., No. 11-697 (Mar. 19, 2013). The Court decided that the “first sale doctrine” of the Copyright Act applies to goods made abroad.

As we previously discussed on this IP Law Blog, the case involved a Thai textbook dealer (Kirtsaeng) who purchased textbooks overseas and sold them to fellow students to help finance his education.  Following a copyright infringement lawsuit by publisher John Wiley & Sons, the student was ordered to pay damages in the amount of $600,000.

The case required the justices to address the tension between two important aspects of copyright law. The Copyright Act prohibits the importation of copyrighted goods without the authority of the copyright owner. However, the “first sale doctrine” entitles the owner of a lawfully made work to resell the work without the authorization of the copyright owner.

The Supreme Court ultimately concluded that the “first sale doctrine” applies to copies of a copyrighted work lawfully made abroad. As explained in the Court’s opinion, “Both historical and contemporary statutory context indicate that Congress did not have geography in mind when writing the present version of § 109(a) [the “first sale doctrine”].”

The Supreme Court further noted that the alternative interpretation favored by John Wiley & Sons would cause practical problems for booksellers, libraries, museums and retailers, which have long relied on the “first sale doctrine.” Further, the Court stated that the fact that the Copyright Act does not instantly protect an American copyright holder from unauthorized piracy taking place abroad does not mean the Act is inapplicable to copies made abroad.

Thus, under the Court’s holding, once foreign-made goods have been legally sold, whether domestic or overseas, copyright holders have no right to control further resale of those goods.  This means that publishers and other manufacturers that formerly exploited copyright to charge different prices to overseas and domestic consumers will have more difficulty doing so, as there will be importers who arbitrage by buying cheaper goods abroad and reselling at the US for prices lower than the manufacturer’s prices.  In essence, the decision legalizes the “gray market” in such goods.

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Is U.S. Customs Equipped to Police Patent Infringement?

The U.S. Bureau of Customs and Border Protection fails to appropriately police imports for patent infringement, according to a recent lawsuit by Microsoft Corp. The company alleges that the agency is allowing Motorola Mobility Inc. to import devices that infringe certain Microsoft patents in violation of an order from the U.S. International Trade Commission.

Pursuant to a May 2012 ITC order, Motorola Mobility, now owned by Google, infringed a Microsoft patent for generating and synchronizing calendar items. The order banned any infringing device from entering the United States.

However, according to Microsoft’s complaint, the U.S. Bureau of Customs and Border Protection (CBP) continues to allow infringing devices into the country. “The CBP has allowed the important of infringing devices based on claims that Microsoft made on an ex parte basis, and that CBP has accepted without providing Microsoft with notice of those claims, much less an opportunity to address them,” the complaint alleges.

“Most egregiously, CBP has allowed Motorola to relitigate—in secret—issues that Motorola lost before the Commission, and has granted Motorola precisely the relief that the Commission expressly refused to grant after full, fair, and open litigation,” Microsoft further argues. Meanwhile, Google maintains that Microsoft is seeking to impermissibly expand the scope of the ITC order.

While Microsoft’s allegations against the CBP must be decided in court, the case raises the larger question of whether the agency is equipped to deal with the recent influx of patent infringement cases. As former ITC chairman, Deanna Tanner Okun, told Reuters, the customs bureau may lack the expertise to enforce the orders. “Problems have increased. The system is outdated,” she said. “They’re using practices and procedures that are 20 years old.”

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, our attorneys possess more than two decades of experience. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Who Are the World’s Top Innovators?

worldglobeCornell University, INSEAD, and the World Intellectual Property Organization (WIPO) recently released the Global Innovation Index 2013. After falling out of the top five last year, the United States has reestablished itself among global leaders in innovation.

The report, published since 2007, examines 142 economies around the world, using 84 indicators including the quality of top universities, availability of microfinance, and venture capital deals. It takes into account both innovation capabilities and measurable results. The United States was last in the GII top 5 in 2009, when it was number one.

Below are the 2013 rankings, along with last year’s positions: 

  1. Switzerland (Number 1 in 2012)
  2. Sweden (2)
  3. United Kingdom (5)
  4. Netherlands (6)
  5. United States of America (10)
  6. Finland (4)
  7. Hong Kong (China) (8)
  8. Singapore (3)
  9. Denmark (7)
  10. Ireland (9)

While the top-ranking countries are largely high-income, the report highlights that several middle- and low-income countries — including China, Costa Rica, India, and Senegal — are making great strides and outpacing their peers. The researchers also found that research and development spending levels exceeded 2008 levels in most countries and successful local hubs are thriving.

“The results of the GII provide testimony to the global nature of innovation today. The top 25 ranked countries on the GII are a mix of nations from across the world – North America, Europe, Asia, Oceania and the Middle East. While high-income economies dominate the list, several new players have increased their innovation capabilities and outputs,” stressed Mr. Soumitra Dutta, co-editor of the report and Anne and Elmer Lindseth Dean, Samuel Curtis Johnson Graduate School of Management, Cornell University.

If you need any help with Intellectual Property issues or advice regarding how best to protect your inventions, ideas or your brand, please contact me at 1-855-UR IDEAS (1-855-874-3327)Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.