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Meti Ketner joins Leaders in Law as the exclusive Intellectual Property Law member in Slovenia

Leaders in Law, the leading platform in its field, is delighted to welcome Meti Ketner as our exclusively recommended & endorsed Intellectual Property Law expert in Slovenia. Meti’s office is located in Ljubljana.

Meti Ketner is a passionate and innovative lawyer and a businesswoman, European Trademark and Design Attorney, the CEO and the founder of KETNER® Ltd. which is constantly progressing and expanding and following the key trends of Intellectual Property Protection to which clients can rely on.

Meti Ketner is aware that the Intellectual Property Protection sector is constantly evolving. Ideas of the future are already changing the present moment. She is very proud to show the world the intellectual capacity of Slovenia – the rising star of this world.

Prior to practicing law in her own company, Meti Ketner was working for the larger Slovenian professional legal offices and also for institutions of public importance and in the frame of international projects of great importance for Slovenia. Meti Ketner strives for success working together with the team of highly-qualified experts by doing the best for their clients. To maintain its strong market position KETNER® is reflecting its strength.

If you require any assistance in this area, please use the contact details provided in Meti’s profile below or contact us at info@leaders-in-law.com & we will put you in touch.

James Coles Authors Unique Intellectual Property Book

The American Bar Association (ABA) has published a unique book from Densborn Blachly attorney James Coles. The book, “Drafting and Negotiating Intellectual Property Transactions,” provides practical insight into drafting and negotiating transactions with intellectual property provisions.

“I started this book because I could not find one book devoted explicitly to the subject matter I was teaching in the law course I designed,” Coles said. “It is very gratifying that the American Bar Association saw the critical need to have it published for the entire law community.”

Coles has been practicing law for nearly 50 years and has spent the last 15 years teaching “Intellectual Property Transactions & Licensing” at the IU Robert H. McKinney School of Law on the campus of Indiana University-Purdue University Indianapolis. The course he designed is unique because its approach is practical instead of case-study based like many law courses. His peer-reviewed book takes the same approach and has already received positive reviews.

“Jim’s vast experience in this field could fill volumes, and we are thrilled he can share this knowledge to educate future generations of attorneys,” said Densborn Blachly Managing Partner David Blachly. “With its unique focus, the book makes a great reference for any lawyer practicing intellectual property law.”

Coles is a leader in advising local, national and international businesses on all types of technology and intellectual property legal issues, including patent, trademark, copyright, trade secret, intellectual property transactions and intellectual property litigation. He has extensive knowledge in drafting and negotiating agreements with intellectual property issues and resolving disputes involving technology and intellectual property matters. He helps clients assess their intellectual property assets through consulting services and develop strategies for protecting and exploiting those assets.

“Drafting and Negotiating Intellectual Property Transactions” is available now on the ABA website at https://www.americanbar.org/products/inv/book/411364913/.

O’Conor & Power – Día Mundial de la Propiedad Intelectual – World IP Day

O´CONOR & POWER
Happy World Intellectual Property Day
San Martín 663, Piso 9
Ciudad de Buenos Aires
(C1004AAM)
Argentina
Tel: (5411) 4311-2740 (5411) 5368-7192
(5411) 5368-7193
ocp@oconorpower.com.ar oconor@oconorpower.com.ar

Competition Law and its Effect on the use of Patent Rights

Which? has launched a £480 million complaint in the UK against 4G chip maker Qualcomm alleging that it has abused its dominant position in the marketplace by inflating prices for licenses of the patents that it holds. Which? alleges that these prices were then passed on to the consumer in the form of higher handset prices.

A patentee grants a patent license to a third party so that the third party can practice the invention without the risk of being sued. Licenses are often granted in exchange for a fee – or in exchange to license technology from the third party – so called “cross-licensing”. In this case Which? alleges that the terms of the licenses were inflated to Qualcomm’s benefit as a result of its dominant position in the marketplace.

The Federal Trade Commission in the United States brought a similar action in the United states in 2017 – but this was ultimately dismissed. However, in Europe Qualcomm was found to have broken competition law for deals it made with Apple, and for its 3G licensing deals. It received significant fines at the time.

What does this tell us about IP? Regardless of the eventual outcome of this particular case, it shows us that patent rights and competition law can be in contrast to one another. Patent rights grant monopolies – the right to exclude others from a market, whilst competition law attempts to stop dominant companies from abusing that position of dominance. Therefore, once a company is large enough that it has a dominant market share it must consider competition law when utilising its patent portfolio.

For technology companies that have a licensing based business model a successful patent strategy could mean that they become dominant in a burgeoning technology market very quickly. It’s therefore necessary to continually assess the market share you have in a particular marketplace and how that may affect your trading practices. As ever it is always best to seek professional representation if you are concerned about such matters.

IP STARS 2021 RANKINGS

Gorodissky & Partners (Ukraine) once again was ranked among the best firms providing services in the field of trademark protection and enforcement according to the IP STARS 2021 rankings.

IP STARS is the world’s leading specialized intellectual property resource, conducting annual surveys since 1994 and covering more than 70 jurisdictions.

The results of the survey can be looked at under following the link:

Managing Intellectual Property

IP Introduces Fast Track Trademark Registration and Renewal

On 23 February 2021, the Department of Intellectual Property issued a Notification introducing a fast track examination process for trademark registration and renewal. This notification is issued with the aim of expediting trademark registrations and the renewal process, thus enhancing and facilitating trademark protection for both the private sector and general public; enabling them to build a conductive business operation.

For the fast track trademark registration, an application for trademark registration will be examined within six months from the filing date, although the publication period and grant of the registration certificate may not be completed in said six-month period. The trademark application eligible for the fast track process must comply with the following conditions:

  • The lists of goods/services must not exceed 30 items.
  • The specifications of goods/services must all conform to the recommended acceptable specifications of the Department of Intellectual Property.

For the fast track trademark renewal, each application will be examined within 45 minutes from the time of submission. The renewal application eligible for fast track renewal must meet the following conditions:

  • The lists of goods/services under the trademark registration must not exceed 30 items.
  • There must be no amendments to the specifications of goods/services under the trademark registration.
  • The renewal application must be submitted at the Department of Intellectual Property, Ministry of Commerce, by the trademark owner or appointed agent. In the latter case, the power of attorney must state that the appointed agent has the authority to receive a certificate of registration.
  • The applicant or appointed agent must request at the time of submission that he/she would like the Trademark Registrar to urgently examine the renewal application and issue the certificate of trademark registration renewal.
  • The official renewal fees must be fully paid. In the event that the renewal application is defective but possible to be corrected within the date of submission of the renewal application, the Registrar shall order the amendment and accordingly grant permission for trademark registration renewal on the date of submission of the renewal application. However, if the application cannot be resolved by the date of submission of the renewal application, the Registrar shall examine the renewal application within the period specified in the public manual (normal process), according to the Licensing Facilitation Act B.E. 2558 (2015).

Please note that this Notification applies to all types of marks, i.e. trademark, service mark, certification mark, and collective mark.

Jones Day promotes 50 partners as it shrugs off impact of Covid-19

Jones Day has shrugged off the impact of Covid-19 in this year’s partner promotions round making up 50 lawyers across its network, up from 34 last year.

There are six promotions in the Asia Pacific region and six in Europe, with the remainder across its substantial national network of US offices.

The promotions were spread relatively widely across the network – partners were made up in 22 of the firm’s 41 bases with Washington DC accounting for the largest tally (six), followed by New York and the top 10 US firm’s Cleveland headquarters, which will both usher in five new partners on 1 January.

There is also a near even gender split – 24 of the new partners are women representing 48% of the cohort. Last year the split was exactly 50-50.

Notable among the appointments is that of firmwide head of pro bono Laura Tuell, who is based in Washington DC. The former trial lawyer oversees the firm’s global pro bono programme as well as having an active practice, particularly representing women asylum seekers seeking protection against gender prosecution.

Research published earlier this year found that more than 55 law firms globally employed 66 dedicated pro bono partners in 2019, compared with just six in 1999.

Among the more unusual locations welcoming new partners is the firm’s 32-strong Taipei office, where Jean Kuo is being made up. She has a broad practice that includes M&A, IP and antitrust with a focus on advising Japanese clients on their investments.

There are four promotions in Australia, up from two last year. In Sydney competition specialist Prudence Smith and M&A adviser Hemang Shah have been recognised while disputes specialists Pip Goldman and Daniel Moloney are joining the partnership from their bases in Brisbane and Melbourne respectively.

The Asia Pacific tally is completed by Shanghai-based IP litigator Guoping Da, who represents multinational companies in IP enforcement and infringement actions in the United States and China. She studied at Peking University before gaining a PHD in biochemistry in the US and then qualifying as a lawyer.

Meanwhile, in Europe, there were two promotions apiece in London (John Crowley, real estate, Laura Pembridge, private equity), Paris (Edouard Fortunet, private equity, Nicolas André, tax) and Brussels (Eva Monard, regulation, Jonas Van den Bossche, M&A).

In terms of practice areas the business and tort litigation team enjoyed the most promotions (nine) followed by M&A (seven) and IP (five).

In March, Jones Day was named the strongest law firm brand in the US for a fourth year in the Acritas 2020 US Law Firm Brand Index. However, last month it was forced to clarify its role as an adviser to Donald Trump by rebutting media claims it was involved in any litigation involving alleged voter fraud.

Earlier this week a group of six former associates withdrew a class and discrimination claim against the firm although they are still pursuing individual claims which the firm has dubbed ‘equally meritless’, according to Reuters Legal.

Other top US firms already to have announced their promotions include Latham & Watkins, which unveiled 33 new partners, the same as last year, and Kirkland & Ellis, which made up a record 145 partners.

UK’s approach to protecting and enforcing design rights

Global Head of IP David Stone speaks to Lexology Learn and discusses why protecting and enforcing design rights in the UK is becoming a lot more attractive, as well as new measures being introduced by the Intellectual Property Enterprise Court. He also looks at where there is room for improvement in the English courts.

Trade Marks, Designs & Copyright: IP Review

Welcome to our Annual Review of developments relating to trade marks, copyright and designs during 2019. We have selected a number of the reports that we have published over the course of the last 12 months, commenting on issues ranging from the latest guidance on the boundaries of trade marks and designs through to a number of interesting questions on copyright protection in the light of developing technology and business models. This year’s Review mentions a couple of cases in which we acted, including in a website blocking action for Nintendo in relation to sites selling devices seeking to circumvent encryption measures, and an important case for Sky in the European Court of Justice relating to trade marks.

We also include a brief update on the Brexit position. Now that the Withdrawal Agreement has been ratified and the UK has left the EU, we are in the transition period. During this period, which will end on 31 December 2020 (unless it is extended, albeit the UK Government has said this will not happen), the status quo will be preserved. There will be no change in how IP rights will be protected and enforced during the transition period and, more specifically, EU Trade Marks and Designs will continue during the transition period to extend to the UK. As part of our Brexit preparations, we have set up Mishcon de Reya IP B.V., a trade mark practice based in The Netherlands. Mishcon de Reya IP B.V. is a wholly owned subsidiary of Mishcon de Reya LLP and will allow us to ensure continued representation in relation to EU Trade Mark and Design matters before the EUIPO following the end of the transition period. We will continue to update you on Brexit developments throughout the year.

Click here to view the pdf version of our Review.

We hope you enjoy reading the Annual Review. Please get in touch if you have comments or queries on any of the topics raised.

Trade Marks

Compared to previous years, trade mark law and practice in 2019 focussed to a much lesser extent on questions of infringement and enforcement. Instead, the key cases raised questions relating to clarity and precision of trade mark specifications (and whether this can be a ground of invalidity of a registered mark), and alleged bad faith during the trade mark application process. […read more]

Copyright

In a continuing trend, 2019 saw the CJEU issue a series of decisions following referrals from Member State national courts on various issues under the Copyright Directive and related Directives. This looks set to continue in 2020 with the CJEU due to hear more copyright referrals. […read more]

Design

Alongside an important referral to the CJEU relating to ‘first disclosure’ for Unregistered Community Designs, the implications of the Supreme Court’s Trunki decision continue to be felt in the UK Courts. […read more]

Brexit

The UK left the EU on 31 January 2020.  The EU and UK reached a revised Withdrawal Agreement which includes a transition period ending on 31 December 2020.  During the transition period, the status quo continues to apply in relation to IP rights, with EU trade marks and designs continuing to extend to the UK. […read more]

Other developments

Other interesting developments over the last year relate to competition law considerations in relation to brands and online marketplaces.

Brexit and the implications for your Intellectual Property Rights

What will the Brexit mean for your intellectual property (IP) rights? Will Britain leave the European Union (EU) without a deal? Or will the Prime Minister manage to get the British Parliament to vote in favour of a Plan B-deal? The Brexit will have consequences for trademark rights, design rights, copyright and patent rights that involve the UK and the EU. Start prepping to protect your IP before Brexit!

The Brexit does not just impact organizations doing business in or with the UK from a commercial trade perspective (e.g. customs and import). You should also think about the ‘crown jewels’ of your organization (e.g. trademark rights, design rights, copyrights or patent rights) covering the European Union.

Brexit will impact every company having intellectual property, licenses and distribution agreements within the EU or UK scope.

Although the uncertainty about the Brexit remains, you should know that whatever happens, you should start preparations. For instance, what happens with the UK coverage of your EU trade mark and design registrations? Should you amend the territorial scope in your intellectual property contracts? A mere reference to the ‘EU’ may become difficult to interpret. This blog outlines the potential implications concerning your intellectual property rights following a Brexit.

Impact of Brexit on European Trade Marks and Designs

EU trade marks and designs are granted by the EU Intellectual Property Office (EUIPO). Currently, companies and individuals owning a registered EU trade mark or design have their trade mark or design right protected across all EU member states including the UK.

After the Brexit, existing EU trade mark and design registrations will no longer include protection in the UK. However, even in case of a ‘no deal-scenario’, the UK government ensured that the rights in all existing registered EU trade marks and designs will continue to be protected and enforceable in the UK by providing an equivalent trade mark or design registered nationally in the UK.

If you have pending applications for trademark or design rights in the EU at the Brexit date, you may refile your application with the UK Intellectual Property Office under the same terms for a UK equivalent right. For a period of 9 months from exit, the UK government will recognize filing dates and claims to earlier priority and UK seniority recorded on the corresponding EU application.

Impact of Brexit on Copyrights

Various international treaties (such as, the Berner Convention and the WIPO Copyright Treaty) govern the protection of copyright. Under these rules, countries provide cross border copyright protection. These rules are luckily not dependent on the UK’s membership of the EU. As a consequence, copyright protection in the UK for EU protected works will largely remain unchanged.

What about database rights and other EU specific IP legislation?

The EU copyright system is based on EU legislation so it only extends to EU member states. Although the protection rights under EU legislation will be preserved in UK law, cross-border IP protection mechanisms will be different. For example, in the event of a no deal-Brexit, there will be no obligation for EU member states to provide database rights to UK businesses. As a result, owners of UK database rights may find their rights unenforceable in the EU. So companies may need to consider other forms of protection for their databases.

Impact of Brexit on Patents and supplementary protection certificates

Only a few areas of UK patent law are derived from EU legislation. Probably the most important issue here is patented pharmaceutical products and chemical compounds. EU law provides for an additional period of protection after a patent has lapsed, the so-called ‘supplementary protection certificate’.

In addition, EU law provides for compulsory licenses to be granted for UK manufacture of a patented medicine for export to a country with a public health need. Also, EU law demonstrates that certain studies, trials and tests using a patented pharmaceutical product will not be regarded as an infringement of the patent.

Luckily, regardless of the Brexit, any relevant EU legislation (including its implementation in UK law) will remain. This means that the supplementary protection certificates, compulsory licenses and exempted studies and trials will be kept under UK law.

What about the Unitary Patent?

Under the European patent regime, a European patent application essentially forms a bundle of national applications. Each application needs to be validated per EU member state. The Unitary Patent will be one inseparable right covering 26 EU countries. The UK is one of those 26 countries. They ratified the Unitary Patent system only in April 2018 which indicates their desire to be part of this system in spite of Brexit.

However, the Unitary Patent protection cannot be separated from the general principle of the EU’s Internal Market. As a consequence, and especially in the event of a ‘no deal-Brexit’, it is questionable whether the Unitary Patent protection will remain applicable to the UK once it has left the EU. If not, it means that businesses seeking patent protection in the UK will still need to commit to the national UK patent system.

Exhaustion of IP rights after Brexit

Another topic for your business to consider, is the so-called exhaustion of intellectual property rights. ‘Exhaustion’ limits intellectual property rights. Once an IP protected product has been legitimately put on the market anywhere in the EU, the IP rights (e.g. prevent the resell or other commercial use) over such product can no longer be exercised because these rights are exhausted.

In a ‘no deal-scenario’, products rightfully placed on the UK market after Brexit, will not be considered exhausted in the EU. As a result, if your company exports products from the UK to the EU you may still require the IP owner’s consent.

To discuss potential effects of the Brexit on your IP rights, please do not hesitate to contact Lukas Witsenburg from Penrose. Email: l.witsenburg@penrose.law or telephone: +31 (0)20-240 0710.