IP Newsletter

Intellectual Property Law Interesting Facts & Information 

Dear Intellectual Property Friends,

this is the first issue of the IP newsletter by Bukovinský & Chlipala | Law Firm. Every 3 months we will keep an eye out for the Slovak & foreign intellectual property updates.

Patents and new technologies

AI cannot be named as inventor on patent applications

In public oral proceedings in combined cases J 8/20 and J 9/20, the Legal Board of Appeal of the EPO confirmed that under the European Patent Convention (EPC) an inventor designated in a patent application must be a human being.

EPO - AI cannot be named as inventor on patent applications 

The Protocol on Provisional Application of the UPC Agreement in Austria has entered into force 

Austria was the first Member State to ratify the UPC (Unified Patent Court) Agreement and the loop was closed on 18. January 2022, when it deposited its instrument of ratification of the Protocol on Provisional Application of the UPC Agreement. This event marks the start of the Provisional Application Period and the birth of the Unified Patent Court as an international organization.

Austria closes the loop – the Protocol on Provisional Application of the UPC Agreement has entered into force | Unified Patent Court (unified-patent-court.org) 

Financial support for small and medium-sized enterprises 

The SMEs Fund is a grant scheme designed to help EU SMEs protect their intellectual property rights. As part of its projects, it has expanded the possibilities of obtaining financial support for small and medium-sized enterprises with patent applications:

1. non-patented applications (1 500 EUR) – for the costs of filing a national or European trade mark and design (75 %) or an international trade mark and design application (50 %),

2. patent applications (750 EUR) – for fees associated with filing a national patent application (e.g. filing a patent application, submitting an application for a full examination).

Aktuality | Úrad priemyselného vlastníctva Slovenskej republiky (gov.sk) 

Increase in the number of global patent applications 

5,070 global patent applications relating to Covid-19 have been published since the start of the pandemic. The Patent Lawyer Magazine blog commented on this milestone and points to an increase in innovation. 

Covid sparks surge in innovation with 5,070 new patent applications (patentlawyermagazine.com) 

Patent Licensing is a Risky Business  

The IPwatchdog blog provided an interesting insight into how risk changes over time in an economic and legal sense and what it means for the dynamics of patent licenses. 

Patentové licencie sú riskantné podnikanie: Nechajte trh dosiahnuť rovnováhu (ipwatchdog.com) 

Comprehensive Analysis of the Federal Circuit 

PatentlyO collected last year's data from the Federal Circuit in a comprehensive analysis with graphics comparing the types of decisions and the evolution of analysed data over the past decade. 

Federal Circuit Dataset & Stats: 2021 Update (patentlyo.com) 

Upcoming major IP events

18 March 2022

UIC LAW: Music Copyright Infringement: Global Perspectives, online

21-22 April 2022

Annual Fordham IP Conference, online

26 April 2022

UPV SR / WIPO: World Intellectual Property Day (see next edition for details)

Trade marks

Trade marks - spotlight on bad faith

Courts at both UK and EU level are increasingly focusing on the concept of “bad faith” in trade marks disputes. Proving of bad faith may result in the rejection or invalidity of the trade mark. In Lexology, they summarised the typical situations and important aspects that are usually associated with the applicant's conduct in bad faith. 

Trade marks - spotlight on bad faith - Lexology 

Level of attention for advertising services 

A case from the General Court involving the assessment of the level of attention of consumers in the analysis of a likelihood of confusion between two trade marks of chartered professionals was analysed in a recent post from the Legal-Patent blog. 

Level of attention - for advertising services - Legal Patent (legal-patent.com) 

Should commonly used phrases or descriptions be protected by trade marks? 

That was the question posed by the Likelihood of Confusion blog in a comment to a lawsuit involving the registered trade mark "thick n juicy". Trade mark rights should not seem to provide a monopoly on commonly used phrases or descriptions. 

Thick and Juicy Hamburgers!! - LIKELIHOOD OF CONFUSION™ 


Digital Services Act 

The proposal for a Regulation on a Single Market for Digital Services (the Digital Services Act – DSA), adopted by the EP on January 20, prompted the European Copyright Society (ECS) to submit a commentary on the proposal from a copyright perspective. The summary was published via the Kluwer Copyright Blog.

European Copyright Society (ECS): Comment on Copyright and the Digital Services Act Proposal - Kluwer Copyright Blog (kluweriplaw.com) 

The 5 Worst Copyright Decisions of 2021 

The Copyright Lately blog published an article with an opinion on the worst copyright decisions and also provided an overview of the interesting copyright cases discussed in the United States over the past year. 

The 5 Worst Copyright Decisions of 2021 - Copyright Lately 


National Intellectual Property Strategy

In September 2021, Industrial Property Office of the Slovak Republic announced consultations with businesses and the public in the development of the National Intellectual Property Strategy. The reason for its development is to contribute to improving the country's ability to create, use and protect intellectual property. Representatives of the law firm Bukovinský & Chlipala also actively participated in the consultations. The draft National Intellectual Property Strategy was supposed to be submitted to the Government of the Slovak Republic by the end of 2021, but this has not happened yet. 

Materiály na pripomienkové konanie | Úrad priemyselného vlastníctva Slovenskej republiky (gov.sk) 

Tokenization of intellectual property for IP rights management

Interest in blockchain technology, tokens, and IP, continues apace. European Intellectual Property Office, WIPO sees potential applications of blockchain technology in IP ecosystems for "ll types of IP assets: Registered and Unregistered Rights".  

Tokenization of intellectual property for IP rights management - The IPKat (ipkitten.blogspot.com) 

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