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In the second part of the annual World IP Survey, James Nurton, Ingrid Hering and Ralph Cunningham analyze the latest trends in trade mark and copyright practice around the world. We also reveal the leading firms in our annual poll

Mary Helen Sears In two relatively recent decisions, the United States Court of Appeals for the Federal Circuit has clarified and reaffirmed the well-established US legal doctrine of "first sale" and its corollaries regarding permissible repair and impermissible (and therefore infringing) reconstruction of patented articles and patented processes associated with them. Jazz Photo Corp v International Trade Commission, 59 USPQ 2d 1907 (Fed Cir August 21 2001) and Surfco Hawaii v Fin Control Systems Pty Ltd, 60 USPQ 2d 1056 (Fed Cir September 5 2001) both rest upon a fundamental of US personal property (or "chattel") law, whereby the purchaser within the United States of an article covered by a United States patent, or one that embodies a process covered by such a patent, has the same individual private property right to use and dispose of it as he or she enjoys with respect to a purchased article not covered by a viable US patent. These rights have been recognized by American courts since at least as early as the Supreme Court decision in Wilson v Simpson, 50 US (9 How) 109 (1850) and have been reiterated many times during the ensuing century and a half.

Mexican IP law does not recognize certification marks (marks identifying products or services whose quality meets particular standards) as a different type of mark. Thus, certification marks are usually registered as service marks in international class 42. Such registration may not prevent third parties from registering the same mark in a different class and use it for non-certified products and services, potentially misleading the public, and thus jeopardizing the value of the certification mark. Under the current Mexican Industrial Property Institute (IMPI)'s examination procedures, it is unlikely that the examiner's prima facie analysis in a cross-class examination will lead him to deny registration based on likelihood of confusion between the certification mark and that of the application filed in a totally different class.

As the internet has expanded in recent years, it has become more and more important due to the fact that it has revolutionized the communications and now it is a significant marketing tool for large and small businesses.

Persistent actions on the part of the Singapore police through the Intellectual Property Rights Branch have been extremely successful in smashing syndicates who have been dealing in pirated articles such as VCDs, DVDs, CD-ROMs, etc.

On August 22 2001 a new law regarding industrial property protection came into effect in Poland. The main legal act regulating the protection of inventions, utility models, industrial designs, trade marks, geographical indications and topography of integrated circuits is the Law on Industrial Property of June 30 2000 (Law Gazette of 2001 No 49, Item 508). The law introduces a number of important changes in the trade mark registration procedure.

Q Todd Dickinson and Roger L May identify 10 pitfalls that lie in wait for licensees and licensors, and examine how to draft contracts to eliminate them

Johannes Ahme A new cost law is under preparation which, besides introducing the conversion to the euro, integrates the regulations regarding all costs and fees of the German Patent and Trade Mark Office and the Federal Patent Court into a single cost act. Thus, essentially all the rules regarding payment of fees are removed from the patent act, trade mark act, utility model act, design model act etc and integrated into a single common cost act. The basic rule of this new cost act is that fees for an application, a request, an opposition, or an appeal become due at the moment they are filed. The Patent Office or Federal Patent Court will start to work on the particular application, request etc only once the fees have been paid. If the fees are not paid within three months after becoming due, the application, request etc is deemed to be withdrawn. The particular fees and their amounts are listed in an attachment to the cost act.

Ingrid Hering, Vienna

Heinz Bardehle, senior partner of German firm Bardehle Pagenberg Dost Altenburg Geissler Isenbruck was awarded the Bundersverdienstkreuz (Great Cross of Merit of the German Federal Republic) by Minister of Justice, Herta Dåubler-Gmelin, on October 24.