This settlement means that all current patent litigation cases are now dismissed, with a 10-year licensing agreement for all current and future patents held by the two companies to be implemented in its place. Along with Samsung and Google, HTC has been one of the most heftily targeted companies in Apple¡¯s assertions of patent infringement over the past few years.

The agreement is confidential, but it comes as no surprise that Samsung had to see a copy of the licence agreement between Apple and HTC. As soon as the settlement was publicized, Samsung¡¯s President of IT and Mobile was that his company has no intentions to negotiate with Apple and settle out of court. As of November 21, Samsung's motion to compel was by Judge Paul S. Grewal, meaning that Apple and HTC must immediately provide a fully unredacted version of the agreement for the exclusive viewing pleasures of Samsung's lawyers as part of the judgment's Attorney-Eyes-Only designation. Currently, the redacted text is neatly comprised of the 33 key words that reveal the financial arrangements of the licencing deal with HTC.

Given that the basis of Apple¡¯s claims against the South Korean electronics powerhouse is premised on the fact that Apple must show that irreparable damage was experienced and cannot be adequately compensated by monetary means, the specific licences granted between Apple and HTC is surely of interest to Samsung. After all, it is conceivable that at least some of the licences agreed upon between the two companies are the same ones in question in the patent lawsuits currently being fought between Apple and Samsung. In its second major case against Samsung (not to be confused with the earlier decision of Apple Inc. v Samsung Electronics Co. Ltd. et al, which the IPilogue covered , and now looks like may be ), Apple that there are certain patents it would never licence, therefore a full-out ban ordered by the court would be necessary to protect is intellectual property for irreparable damage. If Samsung can show that Apple is more than happy to take financial compensation for a contested patent in lieu of an injunction on selling a product, then Apple may have to eat its own words.

Even though both HTC and Apple called for a return to focusing their efforts on innovation rather than on litigation, the legal department at Apple has been grappling with a smorgasbord of recent decisions related to the company¡¯s intellectual property. In complying with a U.K. court ruling to publish an apology for alleging that Samsung copied the design for its Galaxy tablet from the iPad (previously covered by the IPilogue ), Apple injected a tad more tongue-in-cheek humour than what the England and Wales Court of Appeal were prepared to chuckle at. While the initial order provided strict guidelines for how Apple was to issue an apology to Samsung, the iPad makers instead used the opportunity as a marketing tool to denounce the ingenuity of Samsung products.

It looks as though by Apple¡¯s backhanded commentary on the how the High Court got it all wrong, premised on the mere fact that other jurisdictions decided in favour of Apple and said Samsung had in fact copied its design of the iPad. A further order has been put in place by the Court of Appeal for Apple to remove its original apology statement and replace it with another that fully complies with the original order, with an extension on the period of time for which this notice must remain on its website. Sir Jacob was so aggrieved by Apple¡¯s conduct that he awarded costs against the company on an indemnity basis, saying that this higher standard of awarding costs can be done ¡°as a mark of the court¡¯s disapproval of a party¡¯s conduct, particularly in relation to its respect for an order of the court.¡±

The bad news doesn¡¯t stop there for Apple ¨C in Texas, the company was recently slapped with a $368 million damages order after over networking patents used in FaceTime. VirnetX¡¯s success has fueled its confidence to that were not originally included. In China, Apple has just a decision from the Beijing Second Intermediate People's Court to pay the Encyclopedia of China Publishing House RMB520,000 as compensation for selling a pirated version of the Chinese encyclopedia in its App Store. Meanwhile, from across the Atlantic we¡¯ve gotten word that Apple has paid a lump sum of $21 million to for using a copyrighted and trade-marked image of SBB¡¯s station clock without permission as an application icon in iOS 6. The Swiss-designed clock face is still used in SBB stations today. With the slew of lawsuits Apple has brought against other tech giants like Google and Samsung in recent years, it's odd to see Apple being accused (and found at fault, no less!) for infringing on the intellectual property rights of others.

However, it¡¯s not all ominous news for Apple these days. The tech giant was recently granted an incredibly broad design patent for what essentially looks to be a by the United States Patent and Trademark Office. The figures included in the application look to be quite specific; the home button along the bottom of the tablet and the slight curve of the backside are clearly marked out in this design patent. While it¡¯s doubtful that Samsung, HTC, and other tablet makers will likely be moving away from their already-established design aesthetics for a close copy of the iPad, certainly most tablet products fall in line with the general rectangular shape with ¡°softened¡± edges.

Most recently, it was reported that Apple . Okay, maybe this is an over-simplification of what the patent actually is for. Technically Apple received the patent for the way that the animation appears when users swipe their fingers across the screen to flip to the next page. Apparently no other competitor has developed this specific animation in doing the same type action. It will be interesting to see how tablet computer makers derive innovation from these new (and broadly applicable) restrictions in future product designs.

Fan Hannah Lan is a JD Candidate at Osgoode Hall Law School.

The post Bushels of Legal Issues for Apple: An Update on How the Tech Giant is Fairing in IP Law Around the World appeared first on IPOsgoode.

In collaboration with the popular coders¡¯ haven Stack Exchange, the USPTO has introduced , a social network discussion board that utilizes crowd-sourcing to encourage public scrutiny of patents before they are granted. Stack Exchange has also brought Google on board, the result of which will be for to include the hyperlink for the Ask Patents discussion thread related to the particular patent application a user has searched for.

Prior to the adoption of the bill, U.S. patent laws did not allow for the USPTO to consider outside commentary on any pending applications. Some argued that the , but this new joint project between the USPTO, Stack Exchange and Google takes advantage of the provision contained in the (AIA) that allows third parties to submit prior art to invalidate any new patents for that invention. This provision took effect last week as part of Phase 2 of the implementation strategy for the AIA.

Essentially, experts in specific subject matters now have a centralized hub where they can share and discuss any proof that inventions submitted to the USPTO already exist. The network streamlines the identification and reporting process for cyberphiles to earmark patent applications they do not consider to be truly novel, useful, or non-obvious. The USPTO has that this initiative is a way for them to directly engage and solicit feedback from the U.S. innovation community, providing for a more comprehensive examination of each patent application on file.

It is well understood that for an invention to be patentable, it must be both novel and unobvious. In determining whether an invention meets these two criteria, the USPTO and the judiciary will compare the applied for?invention with any prior art that already exists to circumvent any attempts to receive a new patent for works that do not deserve such categorization. But what exactly is considered prior art within the meaning of the AIA? Generally, prior art refers to anything created that is already available to the public, including patents and published works. The folks over on the Stack Exchange blog have written a post about the reasons why they¡¯ve developed Ask Patents, which also includes a brief of what constitutes prior art. They understand it to also include implementations, such as shareware developed by a budding teenage software developer from his or her basement. These inventions may not be easily recognizable to the average shopper at your neighbourhood electronics store, but the online community is often immediately tapped into innovative developments arising from modest means. It is interesting that the USPTO has recognized the need to rely on the expertise of those most connected with what is already readily available in the public market through the Ask Patents project.

What is most prominent about the Stack Exchange blog post is their strong belief that there are now excessive numbers of patents being applied for and granted to tech companies just to cover their bases in case a simple ¡°invention¡± becomes popular down the road. Patent trolls and patent wars are two subjects that are consistently at the forefront of grievances about patent law in the U.S., especially in light of the recent Apple v. Samsung?saga (previously covered by the IPilogue ). Although it is still too early to tell whether Ask Patents improves or hinders the development of patent law, it does seem to be accepted by many users concerned about the direction that patent law in America is headed. Within eight hours of Ask Patents going live, a recently filed application by Microsoft for a patent on ¡°whacking¡± a phone to silence the ringer on the Ask Patents boards, with users providing proof of an Android app that had the same function introduced as early as 2009.

However, a scroll through the comments section of the Stack Exchange blog post explaining the project shows that tech enthusiasts are divided in its support of the government¡¯s new direction, and most are also careful to say that this is but a small step towards remedying the state of patent laws in the U.S. Although crowd-sourcing opens the discussion to numerous individuals with possibly?more expertise than a patent?examiner has, one area for concern is the presumed lack of understanding and knowledge of the full extent of patent legislation nuances amongst the general public. An increase in contributions from the public to the USPTO does not necessarily mean quality contributions to the decision-makers about the merits of a patent application, which may ultimately stifle the efficiency of the process that the USPTO had originally set out to achieve through its collaborative venture with Stack Exchange and Google.

Fan Hannah Lan is a JD Candidate at Osgoode Hall Law School.

The post Patent Pending May Mean Patent No More - U.S. Government Introduces New Collaborative Forum for Reporting Evidence of Prior Art appeared first on IPOsgoode.

Since the introduction of Google Books in 2004 (previously known as Google Book Search and Google Print), Google has seen the development of its online index and search tool?marred by numerous lawsuits at home and abroad alleging copyright infringement. Publishers, authors, image creators and the like took issue with their unauthorized digitization of copyrighted works. In the United States, Google¡¯s main contention throughout this legal saga has been that the snippets of pages that were digitized from?books were covered under fair use laws.

Although it seemed as if an agreement between U.S. publishers and Google was close to approval from both sides in 2009, were critical of the wide-reaching and all-too-favourable terms for Google. Even the Department of Justice at a fairness hearing in 2010, citing the fact that the terms may violate anti-trust laws in the U.S. and also required the court to exercise powers that it did not have to instigate copyright reform beyond the scope of the case at hand. Not surprisingly, New 91ÑÇÉ« Southern District Judge Denny Chin because it ¡°goes too far¡± in giving Google the upper hand. Interestingly, Judge Chin noted that many of the objections cited could be pacified if the terms reflected an ¡°opt-in¡± framework rather than the ¡°opt-out¡± process proposed. and other content creators were especially critical of the opt-out model, wherein Google had sweeping rights to use any orphan works indefinitely until the rights-holder comes forward and objects to such unauthorized use.

In contrast, the settlement that has come to fruition in France reflects such an opt-in framework, wherein Google must first obtain the permissions of publishing houses and their respective authors prior to digitizing the French works. To date, Google has already signed digitization agreements with two major French publishers, and . Following this settlement, it is likely that Google will set its sights on convincing more French publishers and content creators to join. However, it is that publishing houses that ally with Google in this deal must agree that they will not sell their books through any other competing e-content distributor, which could represent a major?blow for Amazon, who recently introduced its French-language Kindle reader and accompanying online bookstore in France. What will?likely result in France is a race between Google, Amazon, Apple and?other e-book retailers?to sign any and all publishers as quickly as possible.

The agreement in France may nonetheless have little effect on the situation in the States. On May 31, Judge Chin rejecting Google¡¯s motion to dismiss the claims brought forward while also granting the three plaintiffs involved class certification status. Google has since to appeal the decision with the Second Circuit, with summary judgments to be filed by July 27 and trial scheduled to begin on October 9. It seems likely that the case will proceed to trial for a determination of whether Google has infringed copyrighted works and owe statutory damages. The debate will no doubt be centered upon what ¡°fair use¡± in this context can mean and whether Google¡¯s use of the copyrighted works can fall under the fair use defense.

Publishers Weekly has that remarks made by the Authors Guild¡¯s Executive Director seem to suggest another invitation for Google to resume negotiations for settlement. For the publishing industry as a whole, a key point of contention in these negotiations that must be resolved is a determination of how to ensure that authors of all published works, including those of an academic nature, can be taken into account through this arrangement. UC Berkeley Law¡¯s suggests that scholars like herself are quite happy to provide their academic works in an open access forum, and their goals differ quite a bit from the more profit-oriented Authors Guild. As Samuelson contends, a class action lawsuit such as this may not be the most appropriate mechanism?with which to spur copyright reform to develop legal open access information schemes that cater to all. The results of this case, whether determined in or out of court, may indeed be a step in the right direction for the larger discussion of how best to balance protection of creators¡¯ rights with public access to information and scholarship across all genres.

Fan Hannah Lan is a JD Candidate at Osgoode Hall Law School.

The post Google Plays Nice with French Publishers, Trial Scheduled in the U.S. appeared first on IPOsgoode.

The trademark battle between Apple Inc. and Shenzhen Proview Technology (which I previously covered ) has come to an end. The value of the name ¡°iPad¡± in China is now known, even before the tablet can be stocked on store shelves in the Mainland. A few days ago, the Guangdong Higher People¡¯s Court posted an on their website stating that the two parties underwent successful mediation and have come to a mutually acceptable settlement agreement. Although Proview had wanted as much as $2 billion when negotiations first started, it appears that with the final agreement sum of US$60 million in exchange for releasing the trademark rights of the iPad name in China to Apple. With Proview deeply saddled with debt and Apple keen to forge ahead with its business in one of its largest consumer markets, the settlement must have come as a relief for both parties given that both were operating without the benefit of time.

The news has caused a stir in the blogosphere amongst many Apple technology enthusiasts, and the biggest concern floating around seems to be what this settlement means for the development and implementation of intellectual property law in China. On the extreme end of the spectrum are the commentators who have as indicative of the country¡¯s utter lack of respect for and understanding of Western IP protections. While high-level corruption in government and the law does still remain a pertinent issue in China, it seems to me that journalist and IP lawyer has sensationalized the settlement into something that overlooks the actual legal facts.

At its core, the that said the trademark for ¡°iPad¡± belonged to Proview was based purely on the contract particulars provided by both parties. Although intellectual property elements are involved, the decision itself was supported by legally enforceable documentation that proved Proview¡¯s legal ownership of the name in China. Proview had , a full decade before Apple introduced the first ever iPad to the public. When Apple purchased the worldwide trademark rights from Proview Taiwan under a proxy name, they failed to realize that the Taiwan parent company did not have legal authority to dispose of any Shenzhen Proview trademark rights in China, since the subsidiary and the parent . While the media has been keen to portray Proview as a failed tech firm on the verge of bankruptcy looking to access the deep pockets of the Cupertino-based tech giant, it is clear on the facts that they have not violated any IP laws; nor has the Chinese justice system been aiding and abetting in Proview¡¯s attempt at a ¡°stick-up¡± as quoted by Roberts.

Beijing-based IP/IT lawyer Stan Abrams provides a useful to Roberts that sets out the discussion in more detail. ?Abrams that while the settlement has no real effect on the state of IP legislation in China, he does believe that this may set the standard for quick-cash schemes from actual trademark squatters. An increase in lawsuit filings over trademarks with higher damages asked of large foreign companies is also expected. This sentiment has been , and it seems awfully coincidental that of yet another Mainland Chinese company suing Apple for trademark infringement surfaced mere days after the announcement of the settlement. This time though, the case seems less promising ¨C Jiangsu Xuebao Consumer Goods Company, a maker of household chemicals and other implements, claims that Apple¡¯s use of ¡°Snow Leopard¡± as the moniker given to its 7^th major release Macintosh operating system infringes on the Chinese company¡¯s trademark of ¡°Xuebao (Ñ©±ª),¡± the Chinese translation of the name. ?It is hard to imagine this case following in footsteps of the Proview case though, since Apple has never used the Chinese name ¡°Ñ©±ª¡± for any of its product sales strategies in China.

The $60 million settlement appears to be a win-win for both parties. To Apple, a company that pulled in , $60 million is peanuts to pay for the potential earnings expected from sales of the iPad in Mainland China. Even though the settlement isn¡¯t nearly enough for Proview to take care of all of its , the $60 million settlement is still a huge sum to take away for a company that stopped making use of the IPAD name years ago. This fact is further highlighted when considering that the average for trademark cases in China was RMB?52,632 (about US$8,200), and even the only accounted for 0.02% of the Proview-Apple settlement at RMB?90,573 (about US$14,000).

The Higher Court of Guangdong that Apple will transfer the settlement amount to a court-designated account. They have alerted China¡¯s State Administration for Industry and Commerce Trademark Office to the settlement agreement terms, helping to facilitate the change of ownership. While Apple currently only has unofficial ownership of the iPad name in China, plans for the import of iPads into Mainland China will surely be undertaken the second they receive official notification of a successful trademark transfer.

Fan Hannah Lan is a JD Candidate at Osgoode Hall Law School.

The post How Much is the ¡°iPad¡± Name Worth in China Right Now? appeared first on IPOsgoode.

Under the World Trade Organization¡¯s ,?to which China is a signatory, compulsory licenses can be issued to allow for a company to infringe a patent without authorization from the rights holder. specifies the parameters in which this license can be granted, taking into account the need to protect the ¡°legitimate interests of the right holder.¡± Specifically, the government ordinary can only grant compulsory licenses when an attempt to acquire a voluntary license under reasonable circumstances has not been successful within a reasonable time frame. However, this requirement may be foregone in cases of state emergencies, but the infringement without authorization from the patent-holder must still be communicated to the proper owner of the intellectual property right. Article 31 also stipulates that one must also remunerate the rights holder when a compulsory license is issued and any licenses granted can be subject to judicial or independent review of a higher authority.

The presently only grant compulsory licenses for patented drugs in instances of national emergencies, extraordinary circumstances, and when the interests of public health are at the fore. Although the wording can be construed as being a bit vague, it is the last circumstance that may have the most resounding influence on the global pharmaceuticals. According to Article 50, not only are eligible drug manufacturers permitted to copy and sell patented drugs in their home countries, but they may also apply for and be granted export rights to send generic drug copies to other countries. This is potentially a game-changer for the pharmaceutical industry as well as the global public health arena, as it is now conceivable for China to export generic medication at a low price to developing countries that do not yet have such legislation in place or the infrastructure to produce the drugs themselves. Moreover, , which are then exported to the U.S., combined, and then imported back into China at a premium that most citizens cannot afford. It seems that there are many favorable conditions that played a role in the government¡¯s decision to amend its patent legislation, especially when access to life-saving medication is an important next step following China¡¯s acknowledgement of its growing AIDS problem.

China is not the first Asian nation to instigate such conditions for domestic drug manufacturers in an attempt to curb its national health epidemic. The Chinese reform followed similar legislative amendments in India, where for a domestic producer to make copies of a cancer drug held under patent by Bayer AG at only 3% of the innovator¡¯s price point. In Thailand, the numbers of HIV-positive people who could afford patented medication prior to the country¡¯s issuance of a compulsory license is the number of patients currently receiving the drugs following the granting of a compulsory license.

A reading of ?shows that the stipulated legislation hues closely to TRIPS agreement terms; however, some critics believe that?. It is interesting to note that Article 53 contains a specific provision saying that compulsory licenses ¡°shall mainly be exercised for the supply to the domestic market¡± [sic], excluding any efforts to combat anti-competition monopolization actions (Article 48) and efforts to treat public health concerns (Article 50). Now that China has opened its doors to producing generic copies of patented drugs, that big-pharma¡¯s reliance on patent income to drive their operations will have to change. A new business model that takes into account the changes in copying and distributing drugs under patent may be required.

An important concern that does not seem to be as widely discussed in the press and in the pharmaceutical industry is the relative competency of Chinese drug manufacturers to produce a quality copy of patented medicines. One may argue that since the active ingredients in patent-protected drugs are already produced in the country, there is no reason why the assembly of these active pharmaceutical ingredients should be any more challenging to produce. However, with China¡¯s spotty track record in the manufacturing of items for consumption (including the and the more recent ), it is not entirely certain how successful the government will be in regulating and monitoring the production standards of its pharmaceutical goods. The Office of the United States Trade Representative , singling out China as an area of concern for the production of inferior active pharmaceutical ingredients using hazardous chemicals that are hidden from regulatory oversight. This is alarming when one considers that China¡¯s new legislation seems to suggest it may export its pharmaceutical goods to other countries for humanitarian reasons.

While many of the effects of these changes in China¡¯s patent legislation have yet to be seen, these new developments certainly represent an important period of transition in China¡¯s legal arena.

Fan Hannah Lan is a JD candidate at Osgoode Hall Law School.

The post China¡¯s New Drug Patent Laws: A Bitter Pill For Big Pharma appeared first on IPOsgoode.

The saga began in 2011 when Proview alleged that they remained the trademark holders of the name ¡°iPAD¡± from their development of that was ¡°an all-in-one internet terminal¡± in 2000. Although Apple supposedly purchased a worldwide iPad trademark in 2009 through Proview¡¯s parent company in Taiwan, Shenzhen Proview contend that this deal did not include the PRC jurisdiction. Proview successfully influenced some cities in China to when it won its case as the rightful owners of the trademark in a decision by the People¡¯s Court of Huizhou in Guangdong province.

The case then went downhill for Proview when a California judge dismissed their claim against Apple in a U.S. Superior Court a few months ago. In the filing, Proview argued that Apple intentionally misrepresented itself by using a shell company called IP Application Development Ltd. (IPADL) to purchase the trademark rights from Proview Taiwan, effectively hiding Apple¡¯s interest in the purchase. A proxy company is often utilized in business transactions to ensure that purchase prices are not irrationally inflated when a high-value buyer is involved. Indeed, one can easily imagine a few extra zero¡¯s behind IPADL¡¯s purchase price of $55,000 if it was publicly known that Apple Inc. was the buying party. Judge Mark Pierce of the Superior Court of California in Santa Clara granted Apple¡¯s motion to dismiss the case on the grounds that he saw no reasons for the dispute not to be resolved through mediation in Hong Kong (as the parties had already agreed to).

In the PRC, trademark law operates strictly on the basis that legal owners of trademarks are determined on a first-file, first-served basis. The current battle with Apple remains focused on whether these trademark rights were appropriately transferred to Apple through the necessary procedures according to PRC intellectual property law. ?As of right now, Mainland Chinese officials have held that it was not, with the State Administration for Industry and Commerce (SAIC) issuing their in April of this year (*N.B.: Original transcript and video of the SAIC¡¯s press conference is in Chinese). According to Chinese law, the original sale of the iPad trademark would require Apple (or IPADL in this case) to have signed an agreement with Shenzhen Proview instead of its parent company to validate the transfer of the trademark rights in the PRC. Thus, at present, Shenzhen Proview remains the rightful trademark?holder to the name ¡°iPad¡± in Mainland China.

In early May, Apple reportedly for Proview to release the trademark rights it still technically holds in Mainland China. An agreement has yet to be reached however, as this amount fell far short of cash-strapped Proview¡¯s original demand of $2 billion, as well as its subsequent amendment to $400 million. Given that Shenzhen Proview is on the verge of bankruptcy, but are quick to point out that the motivation behind Proview¡¯s fervent challenge against Apple seems to be an attempt to amass more money for paying off its debts to creditors.

While the ongoing settlement negotiations between Apple and Proview has meant that the iPad 3 is currently unavailable to residents in the Mainland, Apple¡¯s decision to continue its expansion into more Chinese cities may signify its confidence in a swift resolution to the issue at hand. It is worthwhile to note that some regard the PRC government as being caught in a situation where . As Apple¡¯s , China remains a profitable territory for Apple and it is hard to imagine Chinese citizens being comfortable with having access to the full range of Apple products available in their shopping centres, save for the iPad. Nonetheless, given that Hong Kong is merely an hour¡¯s subway ride from Shenzhen and costs roughly $5 Canadian one way, the option remains for Mainland residents to purchase the iPad in Hong Kong where the device is readily available, sans tax. This could mean that Apple¡¯s forays into China without the draw of the iPad may not be as dire as expected.

Fan Hannah Lan is a JD candidate at Osgoode Hall Law School.

The post Apple to Further Expand its Territory in the Chinese Market: With or Without the iPad appeared first on IPOsgoode.