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A company's intellectual capital includes a lot more than mere patents and trade marks

It is now seven years since the Council of the European Communities adopted Regulation (EEC) No 1768/92 concerning the creation of a supplementary protection certificate for medicinal products, which entered into force on January 2 1993. This Regulation was intended to compensate the patent proprietor for the fact that, because of the long time taken by state marketing authorization procedures for medicinal products, the period of effective protection under the remaining term of the patent after such authorization has been obtained has been reduced considerably. The supplementary protection certificate (SPC) is a property right in its own right, which is granted separately for each member state of the EEC. It does not lead to a general extension of the term of a patent, and the question of the subject matter and extent of protection conferred by SPCs is consequently of decisive importance. Among specialists, this issue is the subject of highly charged debate, and the practice with regard to granting in the various member states also shows that, in some cases, very different standards are applied, with the consequence that, in the United Kingdom for example, certificates can be granted for active agents in a medicinal product in the form of their bases or salts thereof, whereas in Germany the Federal Patent Court (BPatG) has hitherto taken the line that the subject matter of an SPC can only be for the active agent shown in the marketing authorization. In the opinion of the BPatG, only the courts hearing infringement cases are entitled to determine the extent of protection conferred by an SPC, not the German Patent and Trade Mark Office.

The Supreme Court of Cassation has confirmed in a decision dated October 28 1998 and now published that section 1-bis of the Trade Mark Law prevents the registrant from the enforcement of his exclusive rights against third parties who use his trade mark, if it is necessary to indicate the destination of a product or service, especially as an accessory thereto or as a spare part thereof.

Article 6 of Law 255/1998 for Protecting New Varieties of Plants stipulates the conditions the variety must meet in order to be considered novel. These conditions are fully harmonized with the corresponding provisions of UPOV (the International Convention for the Protection of New Varieties of Plants), Article 6 (1) (b).

A patent application was filed in the Czech Republic with the priority claim of a German utility model application, but after the publication of the said German utility model application. This fact was used by a petitioner, who filed a request, to cancel the patent granted on the mentioned Czech patent application in a first instance proceeding.

Rapid technological change is forcing legislators to re-consider IP legislation everywhere. John Tessensohn and Shusaku Yamamoto analyze Japan’s attempts to modernize copyright and trade mark protection

Internet entrepreneurs beware. Registering a domain name does not give you an automatic right to the equivalent trade mark.

When applicants appeal Korean Industrial Property Tribunal (KIPT) decisions on unpatentability matters to the Korean Patent Court (KPC), they are usually frustrated at the decisions made by the court. Considering that most of judges at the KPC have limited technical background, it is extremely difficult for an appellant to persuade judges to overturn a KIPT decision sustaining the examiner´ s rejection on a patent application by discussing complex technical principles and theories as to why such an invention should be patentable. In other words, judges at the KPC customarily defer the technical aspects of an invention, ie whether an invention is patentable, to the KIPT because the KIPT is comprised of technical experts whose decisions are usually supported with precise and accurate technical reasons.

Increasingly, the decisions of the US Court of Appeals for the Federal Circuit reflect the need for patent applicants, particularly non US-based applicants, to be assisted by a lawyer who is a skilled linguist. This is a natural outgrowth of the now-established principle that patent claim interpretation is a matter of law to be determined independently by the courts at each level of the litigation process (Cybor v FAS Technologies, 138 F 3d 1448 (Fed Cir 1998 en banc); Markman v Westview Instruments, 52 F 3d 967 (Fed Cir 1995 en banc); affirmed 517 US 370 (1996).

Even a casual student of United States patent law developments during the past year unavoidably would have happened on multiple discussions of the Court of Appeals for the Federal Circuit´ s State Street Bank & Trust Co v Signature Financial Group (149 F3d 1368 (Fed Cir 1998)) decision, that held computer software for conducting methods for doing business to be patentable subject matter and not per se unpatentable subject matter. Not only has a majority of the US legal community positively responded to this decision because it addresses critical patentability questions involving software, but also technology owners have responded with increased patent application filings. By last December, the US Patent and Trademark Office reported that applications claiming inventions in a fashion similar to the claims in State Street Bank had increased by over 40% over the previous year and that it expected to issue over 300 patents with business method type software claims by October of this year. Unmistakably, the pump was primed even before the State Street Bank decision issued.