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Nearly a decade after the first release of shocking advertising images by Benetton, the German Federal Constitutional Court has now found the ads acceptable. Henning Hartwig examines the landmark decision, which has finally put an extensive discussion to rest

In one of the most eagerly-awaited patent trials in recent years, Amgen has successfully defended three out of the five patents protecting its best-selling drug Epogen. In a 245-page ruling, Judge William G Young of the US District Court in Boston ruled that Transkaryotic Therapies (TKT) infringed the patents in its experimental drug Dynepo. But he ruled that two further patents on Epogen were not infringed. Dynepo is at present in phase III clinical trials. TKT´ s shares fell over 50% following the decision, while Amgen´ s share price shot up 10%.

Fact they say is stranger than fiction. In the David v Goliath case that is Trovan v Pfizer this is certainly true. In the story David slays Goliath and is proclaimed king. In the Trovan case, Pfizer´ s Goliath is made of stronger stuff. On January 11, Trovan filed an appeal in the Ninth Circuit Court challenging an earlier ruling which overturned a record $143 million damages award to the company for infringement of its Trovan trade mark.

For copyright owners, news from Hank Barry, Napster´ s CEO, that there are more than 200 million multimedia PCs worldwide with the capacity to copy an MP3 file, and that Napster´ s software has been downloaded and installed 57 million times, will make grim reading. Except that is for copyright owners in France. French authorities are planning to put levies on the sales of computers and digital recording devices as a means of compensating musicians and film-makers against pirate copying. The taxes on recordable CDs, DVDs and mini-discs went into effect on January 22. A 420-minute recordable DVD faces a Ffr57.7 ($9) levy, most of which will go directly to the artists and producers.

With TRIPs compliance, legislative reform and a booming technology market, 2000 was a busy year for patent owners in the emerging markets. MIP writers reveal the results of our annual survey and profile some of the interesting stories from the past year

Israel is a high-tech oasis in the Middle East, and home to a burgeoning number of biotech, software and internet companies. Its transformation into this position provides a model for the neighbouring states, reports James Nurton

Owen Dean analyzes the South African law on parallel imports for trade mark and copyright-protected goods in the light of divergent court rulings

In the first case over a .jp domain name, the Toyama District Court has ordered a website to be shut down for infringing a famous name. John A Tessensohn examines the decision

On November 29 2000, a majority of the United States Court of Appeals for the Federal Circuit, sitting en banc, rendered an opinion in Festo Corp v Shoketsu Kogyo Kabushiki Co, published at 56 USPQ 2d 1865, which effectively extinguishes the application of the doctrine of equivalents to any term of a patent claim that was narrowed by amendment during its prosecution before the US Patent and Trademark Office (USPTO). While the majority opinion does purportedly limit the prosecution estoppel created by amendments that narrow a claim in any respect to those amendments made for reasons "related to patentability" , that opinion is also unequivocally clear in holding that any narrowing amendment to a claim term made for "any reason affecting the issuance of a patent" (56 USPQ 2d at 1870-1871) is "related to patentability" whether made voluntarily or in response to a rejection. Specific mention is made of amendments made for reasons based on 35 USC § § 101 and 112, as well as for prior art reasons based on 35 USC § § 102 and 103 as giving rise to prosecution estoppels and thus foreclosing application of the doctrine of equivalents to amended terms or expressions in claims. The majority opinion leaves an apparent escape hatch from estoppel for narrowing claim amendments made for reasons other than patentability, provided each such reason is stated in the prosecution record at the time of the narrowing amendment but this is of very little practical effect because reasons for narrowing amendments to claims that do not somehow implicate patentability are extremely hard to conceive of, much less substantiate. The majority opinion is explicit in holding that: "When a claim amendment creates prosecution history estoppel with regard to a claim element, there is no range of equivalents available for the amended claim element. Application of the doctrine of equivalents to the claim element is completely barred" (56USPQ2d at 1872).

The Federal Patent Court recently acknowledged the principal registrability of a new kind of trade mark, a so-called "positioning mark" (see for instance BPatG 28W (pat) 66/99 Positionierungsmarke). With this new kind of trade mark, signs such as single letters or exclamation marks, which are otherwise considered not to be registrable, may be registered, if the following minimum requirements are fulfilled: The sign appears on a specific part of the product, eg a jeans pocket or the flank of a tennis shoe. It appears always at the same place of said part of the product. It appears in a constant size (absolute or relative to the size of the goods). It exhibits a particular colour contrast with respect to the goods labelled with the positioning mark. Therefore, in an application for a positioning mark the definition of the carrier (the goods onto which the label is affixed), the position of the sign on the carrier as well as its size of must be given. It is further advisable to give a short description of the mark.